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Updates to French patent law following PACTE Law

January - 2020
Law n°2019-486 dated 22/05/2019 relating to growth and transformation of businesses, referred to as PACTE Law, brings numerous changes to French patent law.

Provisional patent application

A provisional patent application is created. Similarly to the US provisional patent application, it will be possible as from July 1st, 2020 to file a provisional patent application in France, comprising merely a specification, and then to convert it into a patent or certificate of utility application within one year from its earliest filing date. If converted into a patent application, the search fee will have to be paid within one month from the conversion request. This new tool will have to be used very carefully, as upon conversion, added subject-matter will not benefit from the filing date of the provisional patent application: claims will have to be strictly based on the subject-matter of the provisional patent application as filed.

Certificate of utility

As from January 11th, 2020, the maximum duration of a certificate of utility changed from 6 to 10 years, with a new option introduced to convert the certificate of utility application into a patent application (only the other way round was allowed previously) within 18 months from the earliest filing date of the certificate of utility application.

Grant requirements

Concerning the grant procedure of a French patent, inventive step is now a requirement for grant, in compliance with the validity requirements of a granted French patent before a court and most of national patent laws around the world. This will apply to patent applications filed as from May 23rd, 2020.

Opposition proceedings

Opposition proceedings to a granted French patent, similar to opposition proceedings before the European patent office, are introduced. It will be possible to file an opposition to a granted French patent within 9 months from grant. Conditions are yet to be specified at the latest by February 2020 through a decree.
Jucidial actions

The PACTE law sets in the stone of law the imprescriptibility of cancellation actions against industrial property titles, in particular against patents.

A statute of limitations of five years is also introduced for infringement actions based on an industrial property title, in particular based on a patent. The starting point for the five year statute of limitations is the day when the owner of the industrial property title knew or should have known the last fact allowing him/her to take legal infringement proceedings.