France: PACTE Law introduces changes to French IP law

July 29 2019

The French law no. 2019-486 of May 22 2019 on business growth and transformation, known as the Action Plan for Business Growth and Transformation (PACTE) Law, introduces important changes into the French patent system, including conditions for infringement and invalidity actions for all industrial property rights.

Firstly, it will be possible to transform the application for a utility certificate into a patent application, whereas until now only the conversion of a patent into a utility certificate has been possible. Utility certificates will be issued for a 10 year period, rather than six years, from the day the application is filed.

The patent right is now subject to a full and substantive examination procedure including inventive step examination. Each criteria of patentability shall be fully examined. A one-year period is set in order to implement these amendments. These amendments will apply only to applications filed after this one-year period.

It should be noted that the PACTE Law does not provide the possibility of designating France directly in an international Patent Cooperation Treaty application.

In a nine-month period from the entering into force of the law, necessary measures will be adopted to create a patent opposition procedure in order to enable third parties to request before the French Intellectual Property Office (IPO) the revocation or modification of patents, while seeking to prevent abusive opposition procedures.

The order shall also provide the rules of appeals applicable to French IPO decisions on these oppositions.

Invalidity actions brought against patent, plant variety , design or model, or trademark rights, are no longer limited to a five-year period.

This puts an end to strong debates and contradictory decisions about the starting point of the five-year period previously applicable.

This provision applies from the publication of the law but has no effect on decisions which are final.

Until now, there was also a five-year limitation period, calculated from the last act of infringement, for starting an infringement action.

It is now stated that the limitation period for initiating the action starts from "the day the right holder knew or should have known the last fact allowing him/her to bring this action". This new calculation method applies to all IP rights.

This provision has already entered into force with no transitional provision for the ongoing cases.

The provisions of Article L 152-2 of the French Commercial Code on business secrecy have also been amended and are immediately applicable.

Finally, it is provided that the government is allowed to take by order, within six months from the enactment of this law, the necessary measures to implement the Trademark Directive (EU) 2015/2436 of December 16 2015, and to adjust the French trademark law with the new Trademark Regulation (EU) 2017/1001.