December 10, 2020

Amendments to French Patent law throughout 2020

The Intellectual Property Office of France (INPI) has introduced several IP related legislative developments throughout the past year, stemming from the Law on Business Growth and Transformation, otherwise known as PACTE, which initially entered into force in 2019.

The PACTE law was first decided upon to facilitate the economic transformation of France, and includes various provisions in relation to intellectual property. The law has been gradually introduced to various areas of IP in France, with this year seeing new developments in relation to patent and utility model legislation, aside from changes in trademark registration, which we discussed before.

Firstly, changes to the patent examination procedure were implemented on May 22, 2020, allowing the French patent office to reject a patent application based on the lack of inventive step, which was previously only available as a ground of nullity to be declared by a Court. This procedural capability allows for fewer cost and time commitments on the part of the applicant before receiving a rejection. It is worth noting that newly-introduced oppositions may also be raised on the ground of lack of inventive step against patent applications filed prior to May 22nd, and therefore applicants should pay close attention to this aspect of their invention.

Furthermore, the PACTE law introduced new alternative options for obtaining protection for inventions as of January 11, 2020. If an applicant wishes to protect an invention but does not want the application to be subject to mandatory search, they may now convert the patent application to that of a utility model, which is only examined formally. Utility models will also now be valid for a period of 10 years, increasing from 6 years prior to the enforcement of the PACTE law. Additionally, utility model applications filed on or after January 11, 2020 may be converted into patent applications if requested within 18 months from the date of filing or priority, if any, and before the commencement of technical preparations for publication.

The PACTE law has also introduced the option of filing a provisional patent application, which became effective as of July 1, 2020. A provisional application allows the applicant to file a request for patent protection, but defer the filing of application and priority materials in order to establish an early filing date. In such cases, a written request should be further provided to the French Patent Office within 12 months from the filing or earliest priority date to bring it into “compliance”, i.e. file the rest of the required documents, or convert it to a utility model application. If neither of these two options are pursued during the 12-month period, a provisional application will be deemed withdrawn.

New patent opposition proceedings have been introduced before the INPI as of April 1, 2020, applicable to patents granted from this date, the grounds for opposition being the same as before EPO. This allows a third party to submit an opposition directly to the IP Office rather than a court, thus avoiding potentially lengthy and costly legal proceedings. If submitted to the INPI, an opposition must be filed within 9 months from the date of publication of the decision to grant a patent for third parties domiciled in France, or within 3 months for third parties residing in any other country. The new procedure also allows the applicant and the opposing party to suspend proceedings in order to undertake settlement negotiations, a more cost effective and simple alternative to litigation.

The ongoing implementation of the PACTE law has redefined several areas of economic reform in France, and the recent subsequent changes to patent and utility model legislation stemming from PACTE will no doubt encourage growth in IP filings in the jurisdiction.

Author: Danielle Carvey