The French patent law reform – The patent office has got its hands full
A few years ago, France passed a new bill, called “Loi PACTE”, which includes ambitious changes to the French patent system. These changes have now all come into force. Some of the most notable revisions are detailed below:
1. Examination of utility patent applications – Novelty is no longer good enough…
Previously, the examination of French patent applications as to patentability involved a mere cursory anticipation review, and the question of obviousness was left for the Paris Court to decide in case of litigation.
Now, for all patent applications with a filing date of May 22, 2020 or later, the French patent office must perform a complete substantive examination, comparable to the examination carried out by major patent offices, such as the USPTO, the CNIPA, the JPO, the KIPO or the EPO.
In particular, French patent examiners must now assess the obviousness of claimed subject-matter. Only a few office actions have been issued so far under the new regime, and time will tell how the examiners will approach this new task. Judging from the latest Examination Guidelines, the French patent office is currently following the EPO’s problem-solution approach when considering obviousness.
From an international perspective, this can be seen as good news. Indeed, since French patents now undergo a full substantive examination, their quality and thus their enforceability will be improved.
2. The strengthened utility model – Protection now for up to 10 years
In the past, only few applicants filed French utility models, or “certificat d’utilité”, as they are called in French. This was mainly due to their short lifetime of a maximum of six years.
With the patent law reform, the term of protection of French utility models has been increased to a maximum of ten years. In this regard, the French utility model is now comparable to the German utility model.
The new French utility model can be a good solution to affordably protect small and short-lived inventions. Its advantages are mainly:
- Low costs and an easy grant. The office does not search for prior art and does not examine novelty and inventive step. The overall official fees, up to, and including the grant, amount to only 116€.
- The possibility to convert a utility model application into a patent application. This can be done up to the completion of the technical preparations for publication (i.e. around 16 months from the priority date). An applicant can thus still obtain patent protection for an invention that he initially deemed of minor importance but then, after filing of a utility model, becomes relevant.
- Compared to Germany, there is no prohibition of method claims.
- No possibility of a third-party opposition.
As for a French patent, an annuity must be paid each year to keep a French utility model in force.
3. The new utility patent opposition proceedings – Watch out for the grant of your competitors’ French patents
In view of the long-standing success story of the EPO’s opposition proceedings, French patent law now provides for similar proceedings against French patents. Third parties can challenge the validity of any French patent granted on or after April 1st, 2020. The time limit to file the notice of opposition is nine months from the publication of the grant.
The French patent office has published guidelines detailing the rules of procedure, which you can find here. It remains to be seen how this new procedure will be put into practice. So far, the patent office has just started working on the first opposition cases.
If you have competitors that regularly file patent applications in France, we recommend that you set up a patent watch alerting you to any grants. This will enable you to oppose patents that might limit your freedom to operate.
The French patent law reform is an ambitious project, substantially strengthening the role of the French patent office. In the coming years, we will see how the patent office will handle this new challenge. Will the patent community make use of the new procedures? Only time will tell…
We are available to support you in making the most out of the new legal provisions, e.g. if you would like to oppose a recently granted French patent or are interested in filing a French utility model.