The PACTE bill 1, adopted at first reading by the National Assembly on Tuesday, October 9, 2018, contains several patent provisions aimed at promoting innovation and facilitating the growth of SMEs.
From this point of view, the main contributions of the bill concern the promotion of French utility certificates (Article 40), the establishment of an opposition procedure before the "INPI" French PTO (Article 42) and the strengthening of the examination procedure before the INPI (Article 42 bis) (1.).
The Special Commission charged with examining this bill also considered various amendments to the bill, including the creation of a "provisional" patent application, which could soon be launched (2.).
These proposals, partly inspired by the German model, could make the French patent more attractive, particularly to SMEs. In order to reconcile this attractiveness with patents from other countries, it might be useful to add the possibility of requiring deferred examination of a French patent application and to designate France directly in "PCT" international applications (3.).
The main "innovations" of the PACTE bill in the field of industrial property
1.1 Promotion of utility certificates (Article 40)
In the current version of the French Intellectual Property Code ("IPC"), the certificate of utility is an industrial property title similar to a patent, but of more limited scope:
its lifetime is six years (instead of twenty years for a patent); it does not result in a search report or substantive examination by the INPI; an a patent application can be transformed into an utility certificate application, but the reverse is not possible. Thus, except a minimal cost difference (the patent requires the payment of a search fee of 520 euros, then costs to respond to the search report), the utility certificate has few advantages compared to the patent. In practice, the filing of an utility certificate application instead of a patent application is rare.
Article 40 of the PACTE bill proposes to amend article L.612-15 of the French IPC by two measures:
on the one hand, extending the lifetime of the utility certificate to ten years (instead of the current six years); on the other hand, offering the possibility of transforming an utility certificate application into a patent application (the reverse transformation is already possible). Thus, the utility certificate gains in lifetime (ten years instead of six) and flexibility (the patent can be transformed into a utility certificate, and conversely, the latter can be transformed into a patent).
This bill clearly aims to promote the utility certificate as a credible (and less expensive) alternative to the patent: a company could protect its invention by first filing a utility certificate application and then waiting several years before converting it into a patent application.
However, as it stands, the utility certificate will remain a less valuable industrial property title than the patent, in particular because it will not have given rise to any search report or substantive examination.
1.2 The establishment of an opposition procedure (Article 42)
The legal certainty (and therefore the value) of French patents is criticised for several reasons, including:
the examination of a French patent application is limited - the INPI does not have the power to reject a patent application for lack of inventive step, only in case of "manifest" lack of novelty 2; and there is no administrative appeal against a decision to grant a French patent by the INPI, so that a third party hindered by a French patent has no choice but to bring a nullity...