France jurisdiction report: New law brings grand changement

First, it will be possible to transform the application for a utility certificate into a patent application, whereas until now only the conversion of a patent into a utility certificate has been possible. Utility certificates will be issued for a ten-year period, rather than six years, from the day the application is filed. These new provisions apply only from the publication of the implementing decree.

Substantive examination

The patent right is now subject to a full and substantive examination procedure including inventive step examination. Each criteria of patentability shall be fully examined. A one-year period is set in order to implement these amendments which will apply only to applications filed after this one-year period.

It should be noted that the PACTE Law does not provide the possibility of designating France directly in an international Patent Cooperation Treaty application.

Creation of an opposition procedure

In a nine-month period from the entering into force of the law, the necessary measures will be adopted to create a patent opposition procedure in order to enable third parties to request before the French Intellectual Property Office (IPO), the revocation or modification of patents, while seeking to prevent abusive opposition procedures.

The order shall also provide the rules of appeals applicable to the French IPO’s decisions ruling on these oppositions.

Invalidity actions: time limits

An invalidity action brought against a patent, plant variety right, design or model, or trademark, is no longer limited to a
five-year period.

This provision applies from the publication of the law but has no effect on decisions which are final.

Provisions of Order no. 2018-341 of May 9, 2018 on the unitary patent
and on the unified patent jurisdiction, providing the same limitation period, are deleted.

Starting point for limitation period

Until now, there was a five-year limitation period, calculated from the last act of infringement, for instituting an infringement action.

It is now provided that the limitation period for engaging the action starts from “the day the right holder knew or should know the last fact allowing him/her to bring this action”. This new calculation method applies to all IP rights. It is symmetrical to the limitation period of the civil action provided in article 2224 of the French Civil Code.