Update on French Intellectual Property Law: French Parliament Passes "Action Plan for Business Growth and Transformation"

On April 11, 2019, the French parliament passed a new bill titled “Action Plan for Business Growth and Transformation” (hereinafter “PACTE bill” based on French title of the legislation), which includes new legislative provisions affecting French intellectual property (IP) rights.

Provisions of the PACTE bill are expected to enter into force on April 26, 2019 at the latest, and include the following:

• An extension is added to the term for French utility models (“certificats d’utilité”) from a previous period of 6 years to a new 10-year term. The new term brings French utility model terms into conformity with most other European countries that offer utility model protection, as well as the possibility of converting a utility model into a patent application.
• A provision for converting a utility model application into a patent applicationwithin a deadline which still needs to be determined. Currently, only a patent application may be converted into a utility certificate application.
  French patent applications now receive increased examination based on inventive step and novelty requirements, which should improve the patentability assessment of the French patent office.
• French patent applications may be refused if the subject-matter of a patent application is not for an invention, or the subject-matter is specifically excluded from patentability. In contrast with the current practice, French patent applications were only excluded when the subject-matter was “manifestly” not an invention, or the subject matter was “manifestly” excluded from patentability in order to be refused. This change to subject-matter eligibility raises, at least to to a certain extent, the patentability bar.
• French patent opposition proceedings are established together with a 9-month deadline following grant of a French patent for filing a petition for an opposition proceeding.
• The statute of limitations for an infringement action has been changed to begin 5 years from the day on which the owner of the right (e.g., a patent right or another IP right) knew or should have known about the last infringing act enabling him/her to exercise this right. Previously, the statute of limitations period began from the date of the infringing act.
• The 5-year statute of limitations is removed for challenging patent invalidity, and thus an invalidity action may now be raised at any time.

However, one missing provision from the PACTE Bill is the introduction of French provisional patent application.  This will not prevent Applicants from filing a French patent application without paying the filing fees and without prosecuting it with the mere aim of establishing a priority date for the same invention covered by the application.

In view of the reforms in the PACTE bill, innovating companies interested in the French market should consider whether some aspects of their innovations could be better protected by French utility models rather than a standard patent application.

All companies operating in the French market should consider the newly introduced opposition procedure to challenge the validity of French patents.

Increased inventive-step examination should increase the legal certainty of patents for the public, and also provide a stronger right to the benefit of all patent owners seeking to enforce their patents.

The extension of the statute of limitations period for an infringement action and its abolition for an invalidity action should be generally welcomed by all parties.