PACTE Act & patent news – News by YesMyPatent.com

The PACTE law puts in place strong measures to promote intellectual property, particularly those of small and medium-sized businesses.

The PACTE Act in 2 points:

1. Utility certificate to last 10 years instead of 6
2. A new patent opposition procedure

Smart cards, hiv screening tests, e-cigarettes, instant clogging tires, subcutaneous insulin pumps… Each of these inventions, all French, are part of our daily lives and have played a role in our economy. Protecting innovations is therefore essential for the Ministry of the Economy and Finance, which has set its sights on reconquering France’s economy with the PACTE law (action plan for business growth and transformation). It is with this in mind that Bercy is proposing changes to industrial property protection for companies, making patenting more flexible and accessible, and enabling inventors to assert their rights more easily.

“Only 21% of patents for inventions are filed by SMEs in France”.

deplores Bruno Le Maire. When presenting the PACTE law to the French National Assembly on September 25, the Minister of the Economy and Finance spoke of his commitment to innovation and the role that small businesses have to play.

1. Extension of the utility certificate term

The first measure of the PACTE law concerning industrial property makes the utility certificate more flexible.

The utility certificate, in its current version, is quite similar to a patent, except that its duration is much shorter: six years for a utility certificate versus twenty years for a patent, and its scope of protection more limited.

Intended for rapidly obsolete innovations, in the IT and cell phone sectors for example, the utility certificate does not give rise to a substantive examination by the Institut national de propriété industrielle (INPI).

Its duration will be extended to ten years, compared with six today. Above all, and this is a new feature, a utility certificate may be converted into a patent application “within a period and according to a procedure” to be specified by regulation (article 40), a process which did not exist until now.

With the PACTE law, the utility certificate becomes a first step for companies, which can then decide, depending on the viability and economic interest of an invention, to transform this certificate into a patent application, even though the invention has already been commercialized or industrialized.

As a reminder, an invention becomes unpatentable as soon as it has been disclosed, for example at a trade show, or marketed. The criterion of novelty is essential for the granting of a patent application.

Update January 21, 2020:

As of July 1, 2020, the provisions of Decree no. 2020-15 of January 8, 2020 come into force. The utility certificate application becomes convertible into a patent application. This applies to utility certificate applications filed on or after January 11, 2020. The validity period of a utility certificate is 10 years, compared with 20 years for a patent.

2. New opposition procedure

Appeals will also be facilitated. French innovation law is criticized for two reasons. On the one hand, it is sometimes considered too easy to obtain a French patent, as the criterion of inventive step does not have to be met. Secondly, it is currently only possible to administratively contest a patent granted to a competitor during the study phase, and only for a very short period (three months).

In all other cases, challenging a patent once it had been definitively granted by the INPI could only be done in court, with a long and difficult procedure.

The PACTE Act is set to introduce a“right of opposition” to patents (Articles 42 and 42 bis). This right, the details of which will be defined shortly, will enable a third party, whether an individual or a company, to submit an administrative request to INPI for the revocation or modification of a patent.

Read more:

• Opposing a patent: before and after the PACTE Act
• Opposing a patent in France: new opportunities thanks to the PACTE Act!