The Background: The Action Plan for the Growth and Transformation of Enterprises Act ("PACTE Act") adopted on April 11, 2019 and promulgated on May 23, 2019, brings three important changes aimed at strengthening French patents.
The Impact: The PACTE Act extends the term of protection granted by utility certificates and possible conversion into a patent; establishes a complete examination of the validity of French patent applications; and creates an opposition right to French patents.
Looking Ahead: It remains to be seen whether applicants will find the strengthened French patent under the PACTE Act more attractive.
The new PACTE Act ("Act") significantly modifies the law applicable to French patents by modifying the regime of the utility certificate, creating a right to oppose the grant of a French patent, and instituting a real examination of the validity of French patent applications.
Amendments Concerning the Utility Certificate
Article 118 of the PACTE Act modifies the duration of the certificate of utility from six to 10 years (Article L. 611-2 of the Intellectual Property Code ("CPI")). The utility certificate confers protection identical to that of a patent but for a shorter period of time and does not require the establishment of a search report, which must nevertheless be drawn up if an infringement action is brought on the basis of the utility certificate.
Article 118 introduces the possibility of converting an application for a utility certificate into a patent (Article L. 612-15 CPI) under conditions to be specified by regulation. Previously, it was only provided that a patent application could be converted into a utility certificate, particularly when the applicant did not wish to establish a search report.
Utility certificates are widely used in Germany and it remains to be seen whether, as a result of the extension of the duration of protection, French companies will take a greater interest in this right, which they have, until now, largely ignored.
Creation of an Opposition Right to French Patents
Article 121 of the PACTE Act creates a right of opposition against patents granted by the French National Institute of Intellectual Property ("INPI"). Previously, it was not possible to file such an administrative action to challenge a newly granted French patentonly a judicial action for the invalidity of the patent could be filed before the tribunal de grande instance de Paris.
Now, a French patent may be the subject...