New French Provisions Impacting National Intellectual Property Rights

By: Francesca Giovannini

New legislative provisions affecting French intellectual property (IP) rights are under discussion.  In particular, these provisions are contained in a proposed law known as “Action Plan for Business Growth and Transformation” (in French: PACTE) currently examined by the parliament and in a decree the government intends to issue shortly.  Once the bill is finalized and passed and the decree is issued, the new provisions will enter into force, likely in the first few months of 2019.

Among the provisions in the proposed law, one provision relates to a change to French utility models, and two more provisions relate to changes to France’s patent system. The future decree is supposed to establish French provisional patent applications.

Specifically, Art. 40 of the proposed law extends the term of French utility models (certificats d’utilité, which literally means utility certificates) from the current period of 6 years to a 10- year term. This change will bring French utility model terms into conformity with most other European countries that also offer utility model protection.

Art. 42 of the proposed law enables the French government to implement measures for French patent opposition proceedings. Under the proposed law, third parties will have the opportunity to challenge the validity of French patents by means of an administrative procedure. This change will bring France’s legislation in line with the legislation of other European countries that already provide measures for opposing issued patents after grant, namely Germany, Spain, Norway, Sweden, Finland, Turkey, and Moldova.

Art. 42b is newly introduced in the latest version of the proposed law and extends examination of patent applications based on an inventive step requirement in addition to the novelty requirement. In contrast, patent applications have been analyzed with respect to novelty over the prior art without consideration of whether a claim also includes an inventive step. It is important to note that the French Patent Office only performs a formal examination of patent applications, while the search report and the opinion accompanying the search report and containing the novelty analysis are established by the European Patent Office acting as a subcontractor of the French Patent Office. Accordingly, it is still unclear whether French examiners should deal with both patentability requirements or not.

Despite the expected introduction of French provisional patent applications, we generally tend to discourage using quickly drafted provisional applications whenever foreign filing is of potential interest because many jurisdictions apply a strict standard when assessing the validity of priority of a subsequent application.

Moreover, innovating companies having interest in the French market should consider whether some aspects of their innovations could be protected by French utility models rather than a standard patent application.

Also, all companies operating in the French market should consider the opportunity they will have in the next future to file oppositions against French patents.