July - 2019


The industrial property contributions of the Pacte Law

The Pacte Law adopted on May 22th, 2019 amends the French Intellectual Property Code on various points. The Government's primary objective in this area was to significantly increase the number of patent applications filed by SMEs. In fact, in 2017, requests made by SMEs accounted for only 19.5% of all patent applications published by the French patent office (Institut national de la propriété industrielle - INPI).

First, the statute of limitation for the infringement action has been revised. On the one hand, it is now standardized with the statute of common law resulting from Article 2224 of the Code civil so that the limitation period now runs “from the day when the right holder knew or should have known the last fact enabling him to exercise it” and no longer “from the facts that are the cause” which has the effect of delaying the intervention of prescription. On the other hand, the Pacte Law provides that an action in nullity of a design, a patent, a plant variety certificate or a trademark is now imprescriptible.

In addition, the Pacte Law creates an opposition right that allows a third party to request the administrative revocation or amendment of a patent directly before the INPI. A boon for start-ups and SMEs that had no choice but to take expensive action in court to preserve their freedom of exploitation. The provisions relating to this new faculty will be adopted by ordinance, once the Government will have defined the contours of the right of opposition, in particular as regards the grounds for opposition and the modalities of the procedure.

Then, Article L612-12 of the Code de la propriété intellectuelle was revised so that obtaining a patent is now more difficult, but therefore less questionable in the courts. In fact, the new wording now imposes the INPI to conduct a thorough control of the innovation submitted to its review because the reference to the notion of “obviously” new intention has been deleted.

Finally, besides the duration of the Utility Certificate is extended from 6 to 10 years, the latter can now, under certain conditions, be transformed into a patent, whereas until now, only the opposite was possible.

Concerning the provisional patent application, the reform proposal was withdrawn from the final text after an unfavorable opinion of the Conseil d’Etat . In fact, the latter considered that such a provision was not useful to achieve the objective set insofar as Article L612-2 of the Code de la propriété intellectuelle already provides for lighter conditions allowing the attribution of a filing date to the patent application.

Juris Initiative, Behring, Anne-Solène Gay, Industrial Property, Pacte Law, Law n°2019-486 of 22 May 2019 on Growth and Transformation of Enterprises, SMEs, Patent, INPI, prescription, administrative recourse, utility certificate