Higher quality for French patents

Published onJune 2019

On May 22, 2019, the President of France issued a law previously adopted by the French Parliament regarding the growth and the transformation of French companies, with the view to strengthen the attractiveness of the French economy.

One should celebrate that intellectual property (IP) represents a significant part of this law.

As regards trademarks, the new law refers to future governmental orders to transpose the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (See our article here) within six months. New EU regulations relating to trademarks (See our article here) should be adapted into French law before the end of 2019.

As regards patents, the law provides for new statute of limitations for infringement actions and revocation actions, effective immediately (with the traditional exceptions regarding acquired rights).

New Article L.615-8 of the French IP Code provides that infringement actions can be initiated within five years starting from the day the patentee has known or should have known the last fact constituting a patent infringement. The former version set a rule with a five-year limitation starting from the facts constituting a patent infringement. This is a significant modification which clearly increases the limitation period. In practice, the patent infringement action can be initiated once and only once the patentee (or the patent rights holder) has an effective or presumed knowledge of the infringement. The same rule applies to trademark infringement actions (Article L.716-5).

New Article L.615-8-1 provides that cancellation actions can be initiated without any limitation period. One could see this new provision as contrary to the holders of patent rights, which it is indeed, but one should recognize that this new provision is in the public general interest since it allows cancellation actions against patents which should never have been granted.

More importantly, the new law can be seen as the beginning of a new era, which will become reality on or before May 23, 2020 (depending on governmental orders). Four major revisions of French patent law are directly or indirectly concerned:

  • The duration of a French utility certificate (French equivalent of utility models or utility patents) will be extended from 6 to 10 years and applications for utility certificates will be eligible to conversion into patent applications;
  • The creation of a provisional patent application;
  • The registration process for French patents will be strengthened with the examination of the inventive step condition;
  • The creation of an opposition procedure before the French PTO.

The revision of the utility certificate system and the creation of a provisional patent application are obviously quite interesting in practice. The extension of term of the utility certificate is in line with what is commonly adopted in many other countries for utility models or utility patents. The possibility to convert an application for a utility certificate (with no substantive examination) into a patent application (with a substantive examination), on the one part, and the possibility to file a provisional patent application, on the other part, both present multiple benefits and should be most welcome especially by SMEs always looking for more flexibility.

However, the last two revisions are the most significant because they are the reflection of a true new patent system in France.

Examination of the inventive step by the French PTO

The French IP Code authorizes the French PTO to reject a patent application in case the search report manifestly shows that the invention lacks novelty. The lack of novelty must be obvious from the search report. In practice, should the applicant change the initial patent application, for example by combining the initial independent claim with one or several initial dependent claims, the French PTO has no latitude to issue another office action and reject the application.

With the new law comes new power for the French PTO. Future Article L.612-12 of the French IP Code will provide that inventions lacking inventive step shall be rejected.

The French PTO will have the authority to conduct a true examination of both novelty and inventive step before granting a patent registration. There is a clear goal that French patents issued by the French PTO show better quality. The question is: will the French PTO use this new power for good?

Creation of an opposition procedure before the French PTO

Practitioners before the European Patent Office know what an opposition procedure is of course. But it does not exist in the French system. At least it does not until now… but it will.

The future opposition procedure will come as another tool to strengthen the quality of French patents thanks to third parties. Relatively weak patents that would pass the French PTO substantive examination could still be partially or entirely revoked subsequent to an opposition procedure filed by a third party.

What you should remember

That’s an innovative law for patents!

New statute of limitations for infringement actions and revocation actions offer better protection for patent rights holders by increasing the period of time during which a patent infringement action can be initiated, and better protection of the public interest by allowing weak patents to be cancelled indefinitely.

Both the examination of the inventive step and the new opposition procedure come from the same goal that French patents are of better quality than they are now. In time the new law should also have a significant impact reducing judicial actions since, up to now, judicial actions are the only way to criticize the validity of French patents.

© INSCRIPTA

Updated in November 2019.

See our corresponding article related to new trademark regulations.