Double protection between French and European patents, what’s new with the UPC

[23/06/2023]

On 1 June 2023, the entry into force of the Agreement on a Unified Patent Jurisdiction (UPCA) finally set up the Unified Patent Court (UPC) and the Unitary Patent (UP).

While applicants have taken the measure of the strategic changes regarding their European rights (request for unitary effect, opt-out, etc.), they are not necessarily aware that French patents are also affected thereby.

Indeed, Ordinance No. 2018-341 of 9 May 2018, on the European Patent with Unitary Effect and the Unified Patent Court amending the Intellectual Property Code (IPC) in order to bring it into line with the UPC, has completely rewritten Articles L. 614-13 and L. 614-14 IPC relating to the ceasing of effects of the French patent due to the European patent.

As a reminder, any French patent covering an invention for which a European patent has been granted to the same inventor or to their successor in title with the same filing or priority date used to cease to have effect from the expiry of the opposition period or on the date on which the opposition proceedings were closed.

The aim of such provision was to avoid double protection between the original French patent and the European patent on French territory.

However, with the entry into force of the UPCA, the UPC becomes the competent court for unitary patents and "classic" European patents that have not been opted-out of the jurisdiction of the UPC.

The new Articles L. 614-13 and L. 614-14 of the Intellectual Property Code therefore provide for that only classic European patents that have been opted-out may cease to have effect, insofar as only national jurisdictions remain competent for the classic European patents that have been opted-out.

NB:

• a French patent shall cease to have effect on the date of an opt-out if that date is later than the expiry of the opposition period or than the date on which the opposition proceedings are closed;

• an opt-in does not affect the ceasing of effects of French patents.

The consequence of these legislative changes is that double protection between a French patent and an unitary patent or a classic European patent that has not been opted-out becomes possible.

It is therefore strategically useful to maintain the French patents concerned in force.

This will allow, for example, in the case of an infringement committed solely in France, to file an action before the French courts on the basis of the original French patent (rather than before the UPC on the basis of the European patent), and to risk only the invalidity of the French patent.

It should however be noted that the European principles of lis pendens and connexity apply, so that if both the French courts and the UPC are seised of the same case on the basis of the French patent and the European patent respectively, the court seised second should at least stay the proceedings.