PACTE law : New patent decrees

[13/02/2020]

Decree n° 2020-225 of March 6, 2020 – Implementation of the opposition proceedings against French Patent

The Decree n° 2020-225 of 6 March 2020 implementing opposition proceedings against French patents granted by INPI (French Patent Office) was published in the Official Journal on 8 March 2020 (https://www.legifrance.gouv.fr/affichTexte.do?cidTexte=JORFTEXT000041698006&dateTexte=&categorieLien=id)

The provisions of this decree will enter into force on 1 April 2020.

The text defines the terms and conditions under which  opposition proceedings may be filed and processed and specifies in particular the following points:

• opposition proceedings may be initiated against any patent granted as of 1 April 2020;
• opposition proceedings shall be initiated  within a nine-month period following the publication of grant of the opposed patent in the Official Bulletin;
• the proceedings provide for written exchanges between the parties, the issuance of a preliminary opinion by French Patent Office and, at the request of one of the parties or if the French Patent Office deems it necessary, the attendance to oral proceedings;
• the duration of opposition proceedings will vary according to the number of written exchanges between the parties and the French Patent Office will have a four-month period to render its decision at the end of these exchanges;
• decisions rendered by the French Patent Office in the course of such opposition proceedings will be subject to appeal, which will be brought before the Court of Appeal of Paris.

Decree n° 2020-116 of February 12, 2020 – Creation of opposition proceedings against French Patent

Decree no 2020-116 of February 12, 2020 creating opposition proceedings against French patents was published in the Official Journal on February 13. 2020.

As a reminder, under the current law, the validity of a French patent may only be challenged through a nullity action before Paris Court.

As of April 1, 2020 (date of entry into force of the provision), it will thus also be possible to challenge the validity of a French patent by filing an opposition before the French Patent Office (INPI), as it is already the case, for example, for European patents granted by the European Patent Office.

This new provision will harmonize the French law with the laws of other Industrial Property Offices in Europe and in the world.

Decree no 2020-15 of January 8, 2020 – Provisional patent application and utility certificates

The Decree no 2020-15 of 10 January 2020 relating to utility certificates and to the creation of a provisional patent application contains several key points:

• the duration of utility certificates is extended from 6 to 10 years (L. 611-2 2° CPI),
• a utility certificate may now be converted into a patent application during a maximum period of eighteen months following the filing date;
• “provisional” patent applications may now be filed before the French Patent Office. Such applications allow to obtain a filing date by merely submitting a description of the invention and to postpone the submission of claims, the examination of the patent application and the request for a search report during one year.

The provision of this decree will enter into force on 1 July 2020.

We will be happy to provide any additional information in this regard.