PACTE law : Key provisions in the field of industrial property
The French law for the growth and transformation of companies, (the PACTE law, from its French acronym), was definitively adopted by the French Parliament on 11 April 2019. The text, the purpose of which is to promote the development and competitiveness of French companies, plans to “boost innovation in France”.
According to figures from the Ministry of Economy and Finance, In France, only 21% of patents are filed by SMEs, while 57% of patents are filed by large groups. In addition, French SMEs file 4 times fewer patents than German SMEs.
The PACTE law includes several provisions in order to confront the situation and reverse the trend.
Initiation of patent opposition proceedings before the INPI
Compared to European patents and those granted by many other national offices (including Germany), French patents have been the subject of criticism, arising in particular from the limits of the power of the French National Industrial Property Institute (INPI) to examine a patent application and the fact that there is no administrative appeal possible against a decision to grant a French patent, unlike the case of European patents (opposition before the European Patent Office) or even in the case of French trademarks (opposition before the INPI).
Article 121 of the PACTE law creates an administrative procedure for the revocation or amendment of a patent by creating a right of opposition before the INPI. Henceforth, a third party will be able to ask the INPI to revoke or amend a patent application, without having to wait for the patent first to be granted and then to take action – generally costly – before the French courts, as is currently the case.
The scope of competence of the INPI has therefore been strengthened in this respect.
Implementation of an a priori examination of the inventiveness criterion of an invention
Inventive steps are now taken into account when examining a patent application. Article 122 of the PACTE law amends Article L. 612-12 of the Intellectual Property Code and allows the INPI to reject patent applications that are not inventive from the preliminary examination stage. Consequently, the examination of patent applications will strictly take into account the inventive step.
Prior to such amendment, the recognition of the lack of inventiveness of a patent was only possible by obtaining a court decision.
Creation of a provisional patent application and modernization of the utility certificate
The PACTE law provides for the creation of a provisional patent application for a limited period of 12 months. In practice, such a request will enable companies to file a patent request with the INPI by an inexpensive and simpler procedure. As explained by the Ministry of Economy and Finance, the formal patent application may be completed at a later stage, as the company progresses in the patent investigation, while preserving the benefit of priority rights.
Similarly, the PACTE law strengthens the protection offered by the French utility certificate by extending its protection from 6 to 10 years. As a reminder, the utility certificate is an industrial property title adapted to inventions with a short life cycle. Although the evaluation criteria are identical to those of a patent (novelty, inventive step, industrial application), the conditions of examination by the INPI are different, due to the absence of a search report, which permits the investigation period to be shorter. However, this kind of certificate is not widely used in France. Moreover, the utility certificate can now be transformed into a patent application at the request of the patentee (to date only the opposite was possible).
By creating a provisional patent application and modernising the utility certificate, the legislator has sought to modify the procedures of the French Intellectual Property system in order to offer to companies, in particular SMEs and start-ups, more flexible access routes to the granting of patents, which often seem restrictive and costly.
These new mechanisms recall the Gebrauchmuster (German utility certificate model), which is highly appreciated by companies as an attractive alternative or complement to patent applications thanks to its fast and inexpensive registration system.
Amendment of the prescription regime for patent infringement and invalidity actions
Under Article 124 of the PACTE law, the starting point for the prescription period for infringement proceedings is standardized and the action for invalidity becomes imprescriptible.
- Uniformity of the starting point of the infringement action: For all Intellectual Property rights (designs, trademarks, plant variety certificates and patents), the starting point of a civil action for infringement is no longer the moment in which infringing facts have been committed but “the day on which the owner of a right knew or should have known the last fact enabling him to exercise it”. This standardization brings infringement actions closer to the general law regime of Article 2224 of the Civil Code for personal or property actions. The objective of this measure is to strengthen the position of IP right holders in the event of infringement and to improve the compensation for damage incurred by them.
- Imprescriptibility of invalidity actions: For all IP rights, an invalidity action is no longer subject to any limitation period. This measure has generated more debate. although it improves competition by making it possible to eliminate invalid titles at any time, when these titles occupy unlawfully the public domain, it is also a source of legal uncertainty for holders of rights, since it creates a potential for challenges to be made for an unlimited time and therefore could contribute to the weakening of industrial property rights and their value.