Overview of the Law on Business Growth and Transformation (« PACTE » Law)

The Law n°2019-486 on Business Growth and Transformation was published on May 23, 2019. It contains several significant modifications of the French IP system:

PATENTS
Utility certificate’s changes in duration and legal regime
Utility Certificate duration is extended from 6 to 10 years with possibility to transform it into a patent application. Previously, only patent application may be converted to utility certificates.

This IP’s right is now more adaptable for each companies or individuals strategies regarding the type of protection, duration and cost. It also provides the option to defer the Preliminary Search Report.

A regulatory text on practical requirements, including the period during which a conversion may be requested, must be released before the expiry of the twelfth month following May 23, 2019.

Creation of an opposition procedure before the French Patent Office (INPI)
The Government is allowed to take measures for the creation of a right of opposition to French patents and to specify before which instance the decision may be appealed. Ongoing discussions mentioned the Paris Court of Appeal.
This administrative procedure provides to owners of earlier patents an easier and less expensive way for obtaining the rejection (partial or total) or the modification of a patent before its granting. The procedure will not be applicable until regulatory measures have been taken by the Government.

A strengthening of the “a priori examination”
The inventive step is now a ground of rejection for patents applications filed as of May 22, 2020. In addition, lack of novelty does not need to be « manifest » anymore.
This new examination process is a guaranty that stronger French patents will be granted, less likely to be invalided later by a Court of Law and more easily extendable in other countries at a lesser cost.

TRADEMARKS
This Law allows the Government to take measures in order to implement the Directive (EU) No 2015/2436. However, the Government has already released draft Ordinances on February 15, 2019 (the final version of this text has been published on November 14, 2019 and will be in force at the latest on December 15, 2019 as the implementation decree for most of its provisions) which contains major changes to the current system such as the :

Suppression of the requirement of a graphical representation of the sign
This suppression should allow the filing of multimedia marks, sound marks, motion trademarks etc.

Creation of a procedure for invalidity and revocation for non use before the INPI (Effective date : First quarter 2020)
This new administrative procedure can be viewed as a simplified and less-costly way for requesting invalidation on absolute grounds or on some relative invalidity grounds as well as a revocation for non-use.

Insertion of new grounds for rejection or invalidity (geographical indications, plant varieties, trademark filed by the agent or the representative of the holder etc.);

Creation of a “formal opposition” which has to be filed within 2 months from the publication followed by the submission of grounds for opposition within an additional month. In addition, an opposition may now be based on several rights belonging to the same owner;

Extension of the trademark’s renewal period (up to 1 year) and shortening of the grace period (6 months from the day after the expiration and no more from the last day of the month of the expiration).

Audrey Lecaoussin