Reform regarding patents and utility certificates
On May, 31th, 2019, the PACTE law amending in particular
industrial property was published.
For patents and utility certificates, the following changes have been introduced into the Intellectual Property Code :
1) Article L 611-2 of Intellectual Property Code will state that the duration of utility certificates will be ten years instead of the current six years.
2) Article L 612-15 of Intellectual Property Code will state that « the applicant may convert his utility certificate application into a patent application». For the time being, only the transformation of patent application into utility certifcate is possible.
According to Article 118 of PACTE law, the two above items will enter into force « on the date of publication of regulatory text (…), and no later than the expiry of the twelfth month following the publication of said law ».
3) Article L 612-12 of Intellectual Property Code will state that will be « refused, in whole or in part, any patent application (…) whose subject matter is not patentable within the meaning of alinea 1 of article L611-10 », namely « the inventions which are new and which involve an inventive step ». It should be noted that for the time being, although under Article L 611-10 of Intellectual Property Code, inventive step is one of the conditions of patentability, it is not taken into account during examination proceedings. The lack of inventive step may only be raised in the context of an invalidation action, in accordance with article L 613-25 of Intellectual Property Code.
Article 122 of PACTE law provides that this amendment will enter into force within a year after the enactment of said law, i.e. May 22th, 2020, and will be applicable to patent applications filed from that date.
4) Article L 615-8 of Intellectual Property Code will state that the five year-limitation period for civil or criminal proceedings regarding patent infringement shall start « from the day on which the patentee has or should had known the last fact allowing initiating such an action » rather than « from the facts concerned ».
5) An article L 615-8-1 will be inserted in the Intellectual Property Code, and state that « a patent revocation action is not subjected to any limitation period ».
Article 121 of PACTE law provides for the creation of an « opposition right for patents granted by the INPI (French Patent Office), in order to allow third parties to request, by administrative action, the revocation or the amendment of patent », and « the appealing rules applicable to the decisions issued therefrom ».
According to Article 121 of PACTE law, the government is empowered to establish this right by ordinance within nine months from the enactment of said law. Thereafter, the government will have to file a draft of ratification law within six months from the publication of said ordinance.
These changes will have a substantial impact on the practice of the INPI, in particular regarding the grant of French patents, which will certainly be more complicated.
We do not know yet how these new legal provisions will be put into practice. Our teams will thus follow attentively the implementing of these new legal provisions and will keep you informed.