Contributions of the PACTE bill to patent matters

On 9 October 2018 the French National Assembly passed the bill entitled “Action Plan for Growth and Transformation of Enterprises” says PACTE. The purpose of this bill is to foster economic growth by giving businesses the means to innovate, transform, grow and create jobs.

In concrete terms, this action plan has been developed around six themes: “Creation, Growth, Transmission and Rebound”, “Value Sharing and Corporate Social Engagement”, “Financing”, Digitisation and Innovation “,” Simplification “and” Conquering of International markets”.

Innovation at the heart of the debates

On each theme, and this is the originality of this action plan, parliamentary/business leader pairs have been formed to formulate proposals suited to the economic reality. It is in this context that the National Company of Industrial Property Attorneys  or “Compagnie Nationale des Conseils en Propriété Industrielle” (CNCPI) was consulted, in particular with the National Intellectual Property Institute or “Institut National de la propriété intellectuelle” (INPI), regarding “Digitisation and Innovation”.

Introduction of provisional patent applications in French law

The provisional patent application is based on the US “provisional patent application” which makes it possible to apply for a patent at reduced cost without having to respect the imposed formal requirements. This provisional application must be regularised within 12 months subject to being deemed abandoned.

The aim is to encourage companies, especially SMEs, to access patent applications by giving them the possibility to submit, on a provisional basis, their application in the form of a draft and to regularise it within one year. The advantage for companies would be to be able to continue to develop their patent while benefiting from the earlier date of this first filing of the patent application.

This measure is widely criticised because of its dangerous nature since the patent can only protect what is in the provisional application and not future developments. This proposal, far from encouraging innovation, may increase companies’ reluctance to file patents.

This measure, removed from the PACTE bill, will be introduced by regulatory means.

Towards revitalisation of the utility certificate

The aim of the PACTE law is to extend the period of validity of the Utility Certificate and to promote its use among companies, particularly SMEs.

Article 40 I.1 of the bill passed by the National Assembly extends the period of validity of the utility certificate from six to ten years.

Article 40 I. 3°, for its part, creates a new bridge between the utility certificate and the patent by allowing the transformation of an application for utility certificate into a patent application.  Up until now, only the opposite was possible.

Introduction of the rejection of a patent application for lack of inventive activity

Another novelty, Article 42 bis of the bill amends points 5 and 7 of Article  L612-12 of the French Intellectual Property Code (CPI) to provide that a patent application may be rejected on the grounds of a lack of inventive activity.

The opening of a right of opposition to patents

This measure, provided for in Article 42 of the bill aims to create a right of opposition to patents in order to allow third parties to obtain the withdrawal or amendment of a patent by administrative means.

This proposal is intended to prevent abusive proceedings without, however, specifying what would be abusive proceedings or sanctions. It remains to be determined whether the common law system will be applied (i.e. civil liability) or whether a special system will be provided.

These provisions will be implemented by means of a ministerial order.

Next step: examination of the PACTE bill in January 2019 by the Senate. To be continued…