Paris, June 3, 2019 – The PACTE Act for the Business Growth and Transformation Action Plan was published in the Official Journal on May 23, 2019 (Law No. 2019-486 of May 22, 2019). This text embodies the flagship economic reform of the government of Emmanuel Macron, led by the Minister of Economy, Bruno Le Maire. Its primary objective is to improve the growth of small and medium-sized French businesses.
The final text, long debated in the National Assembly and the Senate, including with regard to the provisions concerning industrial property, includes 197 articles (221 articles of which 24 were repealed by the Constitutional Council's decision no. 219-781DC of May 16, 2019). The section "Protecting the inventions of our companies", in particular Articles 118, 121, 122 and 125 are of interest to us here as they concern the French Intellectual Property Code (hereinafter "IPC").
It is noteworthy that each of these four articles presents its own date of entry into force, given that for certain articles this date will of course coincide with that of the corresponding implementing measures.
Utility certificate: extension of the duration and possible transformation into a patent application (Art. 118)
Effective date: no later than May 23, 2020
In Article 118, the PACTE Act extends the duration of the utility certificate from 6 to 10 years (Article L. 611-2 IPC) and completes Article L. 612-15 IPC with a paragraph stipulating that:
"The applicant may transform his application for a utility certificate into a patent application, within a period and according to a procedure specified by regulation."
These provisions enter into force on the date of publication of the regulatory text provided for in the second paragraph of Article L. 612-15 IPC, and at the latest upon expiry of the twelfth month following the publication of this law, namely May 23, 2020.
Introduction of a new tool: an opposition procedure to French national patents issued by the INPI (Art. 121)
Effective date: that of the law to ratify an ordinance under article 121, with the ordinance to be made within a maximum period of 9 months from the enactment of the PACTE Act on May 22, 2019 (thus before February 22, 2020) and the ratification bill to be tabled in Parliament within 6 months of the publication of the ordinance.
Article 121 of the PACTE Act authorizes the Government to establish, by way of ordinance, measures falling within the scope of the law that are necessary to:
1° Create a right of opposition to patents granted by the French National Institute of the Industrial Property (INPI) in order to allow third parties to request the revocation or the modification of a patent by administrative means, while ensuring that abusive opposition procedures are prevented;
2° Provide the rules of appeal applicable to decisions arising from the exercise of this right.
The PACTE Act therefore initiates the legislative process leading to an opposition procedure without, however, shaping the contours that will appear in the ordinance and the regulations. However, it is likely that this procedure will resemble that of the EPO, with a significant question: what will be the appeal body? Two possibilities: the creation of Boards of Appeal within the INPI or the handling of appeals by the Paris Court of Appeal. Based on discussions between professional associations and the INPI, it is envisaged that appeals will be handled by the Paris Court of Appeal, which risks offering parties an appeal procedure that is much longer than the procedure before the first-instance.
It should be noted that Article 121 provides for the application of the articles of the French Intellectual Property Code in New Caledonia, French Polynesia and Wallis and Futuna and makes it possible for local authorities to make the necessary adaptations of the articles in Saint-Barthélemy, Saint Martin and Saint-Pierre-and-Miquelon.
Examining the inventive step of French patent applications: a small revolution! (Art. 122)
Effective date: Patent applications filed from May 22, 2020
In Article 122, the PACTE Act introduces into Article L. 612-12, paragraph 7 IPC, inventive step as a ground for rejection. The word "manifestly" has also been removed from paragraph 4:
4° "Which has for subject-matter an invention which is manifestly unpatentable pursuant to Articles L611-16 to L611-19".
This is an important change for applicants and professionals, for whom French patent applications have thus far been granted for novel inventions. This change has been endorsed following lengthy discussions, with certain parties defending this reform as progress towards a stronger French patent and characteristic of the future opposition procedure, while others opposed it fearing a lengthening of grant procedure and an increase in costs.
Period of limitations: an awaited clarification (Art. 124)
Temporal application of provisions concerning the imprescriptibly of invalidity actions: applies to titles in force on the day of the publication of the PACTE Act, i.e. May 23, 2019, without effect on decisions having the force of res judicata.
In Article 124, the PACTE Act clarifies divergent case law by endorsing the imprescriptibly of invalidity actions with regard to designs (Article L. 521-3-2 IPC), patents (Article L. 6158-1 IPC), plant variety certificates (Article L. 623-29-1 IPC) and trademarks (Article L. 7143-1 IPC).
This article also allows for harmonization of the starting point of the period of limitations for infringement actions "from the day on which the right holder knew or ought to have known the last fact allowing him to exercise his right" with Article 2224 of the Civil code with regard to designs (Article L. 53 IPC), patents (Article L. 615-8 IPC), plant variety certificates (Article L. 623-29 IPC), trademarks (Article L. 716-5 IPC) and with the starting point of actions relating to a violation of trade secrets (Article L. 152-2 of the Commercial Code). The temporal application to facts occurring prior to the effective date of the PACTE Act will be determined by future case law.
The final version of the PACTE Act results in a coherent set of provisions between a stronger French national patent and an opposition procedure and a utility certificate without longer prosecution and transformable into a patent application. Yet these provisions, which have unrelated history and have been the subject of distinct debates, have been grouped together in this text. Indeed, the lengthening of the duration of the utility certificate was present in the initial version of the PACTE Act in response to the government's desire for a "provisional" patent, whereas the introduction of inventive step as a ground for rejection appeared by means of an amendment, amendment rejected by the Senate and ultimately adopted by the National Assembly. These changes are important for applicants and professionals with different effective dates that will need to be anticipated and with additional provisions to come of which we will, of course, keep you informed.