The PACTE Law – new provisions under French law to strengthen French national patents

The PACTE Law no 2019-468 relating to companies growth and transformation of 22 May 2019 (the PACTE Law) has brought in France a wide range of structural measures aimed at lifting obstacles for the growth of companies.

Among them, the PACTE Law includes major reforms relating to various procedural aspects of intellectual property law with the aim to promote innovation and facilitate the growth of innovative companies.

For that purpose, three major changes have been made to French patent law, namely the promotion of French utility certificates, the establishment of an opposition procedure before the French Patent Office (INPI) and the strengthening of the examination procedure of French patents before the INPI.

Not only do these measures offer more flexible and easier access to intellectual property protections but they also make the French patent system more attractive and efficient.

Some of these measures were directly implemented by the PACTE Law, while others are implemented by Decrees taken after the law’s promulgation.

A wider range of intellectual property titles in France

New intellectual property titles are now available in France and offer a more flexible and affordable protection, particularly in line with the needs of innovative SMEs.

The PACTE law provides a possibility for applicants to file provisional patent applications.

These provisional patent applications include a description of the invention, but no claims. The patent application’s claims will need to be filed within twelve months of the provisional application.

The aim is to provide innovators with a lighter and more affordable option than a regular patent application. It allows the eventual patentee to date the invention, make it part of the prior art and to decide, at a further stage, whether or not it wishes to proceed with the patent application.

This provisional application is thus mostly aimed at fostering the use and protection of intellectual property titles at the earliest stage of the innovative process.

It will be of particular interest to SMEs or entities with a limited intellectual property budget such as start-ups and will allow them to take an initial step in the field of intellectual property.

Moreover, the PACTE Law has strengthened the utility certificates with the same objective to offer flexibility to innovators in finding the best adapted and affordable intellectual property title.

A utility certificate now covers an invention for a duration of ten years, as opposed to six years prior to that.

It is also possible to transform a filed utility certificate into an actual patent, which is a new possibility that makes the utility certificate much more attractive.

The aim is to turn the utility certificate into an attractive and flexible title that will be a stepping-stone for companies, which are hesitant to file a patent to cover a specific invention.

With the provisional patent application, the patent, and the utility certificate, innovators now have a broader scope of tools at their disposal to craft an intellectual property strategy in France that closely fits their needs and budgets from the earliest stage of the innovative project.

A stronger and more attractive French patent

One of the most important changes provided by the PACTE Law in terms of patents is the extension of the scope of the examination by the INPI of French patent applications.

Whereas up to now, the INPI was only able to reject a patent on the basis a blatant lack of novelty of patent applications, it will be able to reject a French patent application in particular for:

  • a mere lack of novelty;
  • and a lack of inventive step.

This will be implemented for all French patent applications filed as from 23 May 2020.

A granted French patent will hence have been through a full examination process, which will ensure that the French patent system becomes more attractive on the international scene to both national and foreign applicants.

With patent applications subject to higher scrutiny, the aim is to strengthen French patents and improve confidence in the French patent system.

A new opposition procedure against granted French patents

In line with its goal to strengthen the French patent system, the PACTE Law has provided third parties with new options to challenge granted patents.

While the only previously available course of action available to challenge a patent was to summon the patent owner before the judicial court of Paris, the PACTE Law created a new administrative procedure before the INPI: opposition proceedings.

This administrative procedure is inspired by the existing procedure at the European Patent Office as well as before some foreign offices (eg Germany, the UK, Japan or the US).

This procedure will be applicable to any patent granted from 1 April 2020 and any third party will be able to file an opposition before the INPI against any granted patent, within nine months from the publication of the patent’s grant.

The different stages of the opposition’s instruction are in line with the opposition procedure before the European Patent Office:

  • Once the opposition is filed, it is notified to the patentee, which may file preliminary observations towards the opposition.
  • The INPI then drafts, within three months, a preliminary instruction report. It is notified to the parties, which may present observations in its regard. The patentee may also suggest amendments to its patent. Each party may then challenge the adverse party’s observations.
  • Once the written part of the proceedings is over, the parties or the INPI may request a hearing to present oral arguments regarding the opposition.

The INPI then has four months to render its decision on the opposition, which has the same authority as court judgment. An appeal can be lodged before the Paris Court of appeal.

The parties have the opportunity to suspend the proceedings for a maximum duration of twelve months, which would, for instance, allow them to negotiate.

The aim of this procedure is to strengthen the attractiveness and the legal security of the French patent system as well as to allow an easy and convenient way to challenge granted patents.

End of the debate about a statute of limitations for invalidation proceedings

While the general statute of limitation to be applied in civil matters was reformed by the law in 2008, becoming a five-year statute of limitation, courts had to deal with the new question of the patent nullity action’s statute of limitation.

There were several turnarounds and misguided decisions in case law between 2013 and 2020, before the courts reached the conclusion that:

  • Patent nullity actions are subject to the legal five-year statute of limitation.
  • The five-year time period starts when the nullity claimant has knowledge of the facts and rights on which to base its action, which remained highly debated.

The PACTE Law, with the new article L.615-8-1 of the French intellectual property code now provides for a clear solution by stating that ‘an invalidity action against a patent are not subject to any statute of limitation’.

It can thus be brought at any time, without the patentee being able to claim that it should have been brought before the expiration of a statute of limitations.

In line with the other provisions from the PACTE Law, the aim is to provide a clear and pragmatic solution to ensure legal certainty and security in the French patent system.

All these ambitious measures help in creating a comprehensive, reliable and more flexible patent system in France with a wide range of tools and protections available as from the earliest stages of the innovation and affordable for new innovative stakeholders.