France: PACTE Law introduces changes to French IP law
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

France: PACTE Law introduces changes to French IP law

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.

marie.jpg

Aurélia Marie

Cabinet Beau de Loménie

158, rue de l’Université

F - 75340 Paris Cedex 07 France

Tel: +33 1 44 18 89 00

Fax: +33 1 44 18 04 23

contact@bdl-ip.com

www.bdl-ip.com

more from across site and ros bottom lb

More from across our site

Firms explain how monitoring, referrals and relationships with foreign firms helped them get more work at the TTAB
Luke Toft explains why he moved back to Fox Rothschild after working in-house at Sleep Number for five months
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
In a seminal ruling, the Beijing Internet Court said images generated by Stable Diffusion counted as original works
Boston-based John Lanza is hoping to work more with life sciences colleagues on the ‘exciting’ application of AI to drug discovery
The Delhi High Court has expressed its willingness to set global licensing terms in the Nokia-Oppo dispute, but it must deal with longstanding problems first
Some patent counsel are still encountering errors even though the USPTO has fully transitioned to the new system
A senior USPTO attorney spoke at a Nokia-sponsored event on the EU’s proposed SEP Regulation today, November 29
IP counsel are ‘flooded’ with queries from clients worried about deepfakes, but the law has so far come up short
Each week Managing IP speaks to a different IP practitioner about their life and career