As the prosecution between the filing and the granting of a patent can be very long, the question is raised, in case of infringement, to know from what date the patent right can be opposed to the alleged infringer.
The French patent
In order to be definitively opposable to third parties, the French patent must be granted and this granting must have been published in the Official Bulletin of the Industrial Property by the French Patent Office. In fact, it is from this publication that the third parties can be aware of the existence of the patent right.
In order to allow the applicant for a patent to institute an action for infringement before the publication of the granting of his title, a provisional protection is provided by the French law.
According to Article L. 615-4 of the Industrial Property Code, the titular of a patent can institute an action for infringement if his patent application has been published in the Official Bulletin of the Industrial Property or if he has notified to the alleged infringer a true copy of his application.
The Court hearing infringement proceedings based on a patent application shall reserve judgment until the patent has been granted.
The European patent
According to Article 64 of the European Patent Convention, the protection is allowed from the day of the publication of the mention of the grant.
On granting of the European patent, the titular has to validate the national phase for each designated state. This validation can require to file a translation within three months as from the publication of the mention of the grant. In France, it is sometimes possible to file the translation later (for example in case of a fault of the representative). The French Patent Office publishes the mention of the filing of the translation in the Official Bulletin of the Industrial Property.
It is possible to profit by a provisonal protection before the publication of the grant of the patent, from the publication of the European patent application. In some states, this protection may involve the translation of the claims in an official language. This is the case of France. The provisional protection is granted from the publication in the Official Bulletin of the Industrial Property of the mention of the translation of claims or of the notification to the alleged infringer.
Case of the opposition to a European Patent
Within a 9-month period from the publication of the granting of the European patent, the third parties have the possibility to form an opposition. The result of this opposition may be the complete or partial revocation of the patent, such a revocation having a retroactive effect.
In case of an opposition against a European patent validated in France, it is possible to institute an action for infringement. However, the French judge has the faculty to reserve his judgement because of the risk that the patent be revoked or has his scope restricted. However, the judge may also prefer not to paralyse the action for infringement.
In the case of a European patent application bearing on the same invention as a French patent (same inventor, same priority date), the Court to which an infringement matter of the French patent has been referred to must reserve his judgement till the date at which the latter stops producing his effects (end of the period allowed to form an opposition or end of the opposition prosecution (see Art. L. 614-15 of the Code)).
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