PACTE law: 2020 evolutions

The « PACTE » law (No. 2019-486), published on May 23, 2019, provides for the gradual entry into force of various measures relating to intellectual property in France.

Among the measures concerning patents one can cite 1/ the creation of opposition proceedings before the French Patent Office (National Institute of Industrial Property), 2/ the strengthening of the examination proceedings by introducing the inventive step requirement and 3/ the strengthening of the utility certificate system.

1/ Implementation of opposition proceedings before the French Patent Office

The opposition proceedings allow any opponent, within a maximum period of nine months after the grant of the French patent, to challenge its validity before the French Patent Office.
This procedure will allow third parties to challenge the validity of a patent directly before the French Patent Office instead of going before the courts.
The possibility to file an opposition will apply to patents whose mention of grant has been published in the Official Bulletin of Industrial Property on or after April 1, 2020.

2/ Strengthening the examination proceedings before the French Patent Office

The law will now allow the French Patent Office to reject a patent application for lack of inventive step. This measure, in connection with the opposition proceedings, will increase the quality of French patents and the legal security of third parties.
The inventive step requirement will apply to patents filed on or after May 22, 2020.

3/ Strengthening utility certificates

The utility certificate is an industrial property title that protects an invention.
Unlike the patent, the utility certificate does not give rise to a search report and is granted without examination of the application.
Since January 10, 2020 the term of protection of the utility certificate is 10 years (compared to 6 years previously). This extension of the term of protection applies to utility certificate in force or filed on or after January 10, 2020.
In addition, it is also possible to request the conversion of a utility certificate application into a patent application for all utility certificate applications filed since January 11, 2020 (previously, only the reverse was possible, i.e. conversion of a patent application into a utility certificate).
The request of such a conversion has to be filed within 18 months of the filing or priority, and in any case, before the beginning of the technical preparations for publication of the utility certificate application.

It is important to note that the interest of the utility certificate is greatly reinforced by the new provisions of the PACTE law since inventive step will very soon become an examined criterion for granting the French patent.
The utility certificate therefore represents an interesting alternative to patent filing, for example for inventions with a short commercial life cycle.

Of course, our experts Plasseraud IP Patents remain at your disposal should you have any questions about these new measures.