Paris, March 17th, 2020 – The 2019 PACTE Law will deeply modify several fundamental aspects of the French patent law. One of the flagship measures in this area is undoubtedly the creation of patent opposition proceedings before the French IP Office, with the right to appeal before the Paris Court of Appeal.
As explained in a previous article, Law No. 2019-486 of May 22, 2019, known as PACTE Law, provides significant changes in the French patent law. It strengthens examination proceedings (see the article on this topic), changes the limitation periods, extends the duration of utility certificates and allows their transformation into patent applications (see the article on this topic). It also introduces the possibility, before the French Industrial Property Office (INPI, National Institute of Industrial Property), for third parties to oppose French patents whose publication of the mention of the grant will have been published from April 1, 2020.
After a brief overview, French opposition proceedings will be approached through similarities and differences compared with the opposition proceedings before the European Patent Office (EPO), and from a strategic point of view. Eventually, the possibilities of appeal will be discussed.
Article 121 of the PACTE Act anticipated the creation of a “right of opposition” to French patents by ordinance. The French Intellectual Property Code was thus amended by Ordinance No. 2020-116 of February 12 and Ordinance No. 2020-225 of March 8.
In brief, after an examination of admissibility of the opposition, an investigation phase will begin. During this phase, the patentee will first have to file arguments in response to the opposition. The INPI will then issue an investigation opinion which will introduce an exchange phase between the patentee and the opponent. The investigation phase may end with oral observations. The decision will be subject to appeal before the Court of Appeal of Paris.
2.1 EPO away from EPO (almost)
The French opposition proceedings has many similarities with its European big sister, sometimes slightly adapted to the national context.
Any third party, except the patentee, may oppose a French granted patent (new art. L. 613-23). In accordance with the report to the French President on the decree, no interest in taking legal action should therefore be required, and a figurehead should be able to file an opposition.
The opponent may be a natural or legal person acting personally or through a representative (new art. R. 613-44). Residents outside the European Union or the European Economic Area must appoint a representative. Several people may jointly file an opposition. In case of multiple oppositions, their proceedingss are shared (new art. R.613-44-3).
The opposition period is 9 months from the publication in the Official Gazette Industrial Property of the mention of the grant of the patent (new art. R. 613-44). The opposition fee is EUR 6001.
As is customary, the grounds for opposition are (new art. L.613-23-1) the lack of novelty, inventive step or industrial application, exclusions and exceptions in matters of patentability (1°), insufficiency of disclosure (2°) and extension of the subject-matter of the patent beyond the content of the patent application as filed and, when a divisional application has been filed, of the initial patent application as filed (3°).
The conditions of admissibility of the opposition are similar to those of the European proceedings (new art. R. 613-44-1, R. 613-44-2). Different sources of law will have to decide whether or not cases of opposition deemed not to have been filed before the EPO have the same legal consequence in France (EPO Guidelines G-IV, 1.2.1). As a reminder, before the EPO, an opposition deemed not to have been filed leads to a refund of the opposition fees (EPO Guidelines G-IV, 1.4.1).
The Director General of the INPI “rules on the opposition at the end of contradictory proceedings including an investigation phase” (new article L.613-23-2). The INPI “enforces and follows itself the principle de la contradiction2. It cannot base its decision on means, explanations and documents invoked or produced by the parties without the parties having been able to debate them adversely” (new article R.613-44-4). As before the EPO with the violation of the right to be heard, violation of the principle de la contradiction could therefore constitute a ground of appeal. The investigation (“instruction” in French) includes a written debate phase where, under the supervision of the INPI, the parties exchange observations. At the request of one of the parties or of the Director General, the filing of oral observations may complete the investigation phase (new art. R.613-44-6).
During the proceedings, the patentee may amend the opposed patent (new art. L. 613-23-3) provided that the amendments meet a ground for opposition.
At the end of the proceedings, the patent is entirely or partially revoked, maintained in an amended version or the opposition is rejected (new art. L. 613-23-4). Compared to the EPO, the French law therefore provides an additional outcome: partial revocation, which difference with maintaining the patent in an amended version will have to be clarified.
Under the new art. L. 613-23-6, “revocation is absolute. The effects of the decisions ruling on the opposition are retroactive to the date of filing of the application.”
Each party “bears the costs it has incurred, unless the Director General of the INPI decides on a different allocation of these costs, to the extent that fairness requires, and within the limit of a schedule fixed by a decree” to be published (new art. L.613-23-5). This aims in particular at preventing the abusive oppositions of article 121 of the PACTE Act.
2.2 French exceptions
Other provisions clearly differ from the opposition before the EPO.
2.2.1 Investigation
The investigation phase is covered by new art. R.613-44-6. Unlike the provisional opinion of the EPO, which is generally annexed to the summons to attend oral proceedings towards the end of the written proceedings, the investigation opinion from the INPI is issued at an early stage in the written debate phase, at the latest three months after the patentee’s first response.
The oral debate phase should be close to the EPO’s oral proceedings, where opinions are given by the opposition division as the proceedings progress. However, the wording of the legal texts published at this stage are broad enough to cover the case of pleadings similar to that which take place in French civil courts.
2.2.2 Third parties
The laws do not provide with the possibility of filing third parties observations, or the possibility of intervention of an alleged infringer, but the exact manner in which they will be treated in opposition remains to be confirmed.
Intervention may be possible in the event of an appeal, subject to the Code of Civil Proceedings, as part of a voluntary intervention.
2.2.3 INPI (not?) to examine of own motion
Under new art. R. 613-44-12, the “opposition proceedings is closed: 1. When all the opponents have withdrawn their opposition; […]”. Thus, unlike before the EPO, continuation of the proceedings by the INPI of its own motion does not appear to be possible.
What about the possibilities for the INPI to examine of its own motion during the proceedings? If such examination may happen in civil proceedings, and although it does not seem explicitly prohibited by the laws in the opposition proceedings, some provisions could be interpreted at least as restricting the flexibility of the INPI on this matter (new art R.613-44-4, 5 and 9). Other sources of law, such as caselaw, will help clarify this point.
2.2.4 Suspension
New art. R. 613-44-10 specifies the possible cases of suspension of the opposition proceedings, and new art. R. 613-44-11 lists the proceedings resumption possibilities.
If the suspension for entitlement proceedings before the Court exists in the French opposition, no resumption on the initiative of the Office is possible and it would be necessary in theory to await a decision that is not subject to appeal before resuming the opposition proceedings.
On the other hand, suspension for nullity action before the Court is provided, as well as a suspension on the initiative of the INPI and a suspension on the initiative of the parties. The latter will prove useful in order to conduct negotiations.
According to amended art. L.613-24, a request for limitation of the patent during an opposition does not allow the opposition proceedings to be suspended. On the contrary, the opposition leads to the closure or the inadmissibility of the limitation proceedings, unless the latter is requested in the event of a nullity action.
2.2.5 Effects of the decision
Under new art. L.613-23-2, the “decision of the Director General of the INPI has the effects of a judgment within the meaning of 6° of Article L. 111-3 of the Code of Civil Execution Proceedings”. This tends to strengthen the judicial nature of the opposition proceedings.
In addition, in the event of partial revocation of the patent, once the decision is not subject to appeal anymore, new art. L.613-23-6 provides the patentee’s referral to the INPI for patent amendment proceedings, probably ex parte. If the patent is maintained in an amended version, no referral is explicitly provided.
2.3 Aspects awaiting clarification
Several other aspects will have to be clarified in lower-level legal texts or through caselaw: possibility for the patentee to make subsidiary requests including amendments to the patent (the INPI seems favorable to this option), use of languages (language of the case, language of cited documents, etc.), management of late furnished documents, etc.
According to the transitional provisions mentioned in article 5 of the decree, the opposition will concern all French patents whose mention of the grant will have been published from April 1, 2020.
As a reminder, the strengthening of the examination of French patent applications (see the article on this topic), and in particular the introduction of the lack of inventive step as a ground for rejection will only affect patent applications filed from May 22, 2020. The opposition will therefore be able to affect many patent applications filed after the current simplified examination, and which will therefore be particularly subject to opposition. Companies are therefore advised to analyze which opposing titles could be attacked in this way.
For patent applications liable to opposition, applicants are also advised to plan, when examining the patent application, fallback positions in the claims and to identify them as such in the response to the preliminary search report.
The first deadline for opposition will thus expire on January 1, 2021 (which will be a public holiday, and the January 2, 2021 being a Saturday, the deadline will actually expire on Monday January 4, 2021). However, filing an opposition before this date may be sound. As a matter of fact, the examination of the admissibility of the opposition might potentially start before the expiration of the 9-month period, so as to give opponents a chance to remedy any grounds of inadmissibility if necessary. As the proceedings is new, it may be useful to file the first oppositions well in advance of the 9-month period.
Nonetheless, as an alternative to reinforced patents, the PACTE Law has made utility certificates more attractive by extending their duration and allowing their transformation into patent applications (see the article on this topic). This attractiveness is reinforced by the fact that a utility certificate cannot be the subject of opposition (amended art. L.611-2).
4.1 Appeal against the decisions of the INPI
Decisions ruling on oppositions brought against patents may be subject to suspensive appeals (amended art. L.411-4), which may themselves be appealed to the Court of Cassation.
The competent jurisdiction is the Court of Appeal of Paris (new amended article D.411-19-2). As a reminder, this court is already competent for appeals concerning civil actions in patent matters and for annulment actions against the decisions of the Director General of the INPI in matters of granting, rejection and maintenance of patents.
Appeals “are filed, instructed and judged in accordance with the provisions of the Code of Civil Proceedings” (new art. R.411-20) subject to adaptations specified in the Intellectual Property Code. In some situations, third parties can intervene either forcibly or voluntarily.
The parties get a one-month deadline from the communication of the decision to file an appeal (new art. R.411-21) and a further three-month deadline from the appeal to conclude (new art R.411-29). The defendant also gets three months from the communication of the plaintiff’s conclusions to conclude and file, if necessary, a cross-appeal (new art. R.411-30). These deadlines are increased by an additional month for those living overseas and by two months for those living abroad (new art. R.411-43).
These appeals “refer to the court the investigation of the entire litigation. The court rules in fact and in law” (new art. R.411-19). However, this very broad framework has limits. For example, the parties cannot generally submit new “prétentions”3 in relation to those submitted in the context of the opposition, but they can “invoke new means, produce new exhibits or propose new evidence” (new art. R. 411-38). Case law will no doubt clarify these provisions.
4.2 In case of rejection of amendments request
As a reminder, at the end of the opposition proceedings, in the event of partial revocation of the patent, the patentee participates to a request for amendment (new art. L.613-23-6). Under new art. R.612-73-3, a decision to reject such a request “may be the subject of an action for annulment as provided for in the first paragraph of article R. 411-19”, a priori before the Court of Appeal of Paris (article D.411-19-2) within one month (art. R.411-21).
4.3 In the absence of any reasonable grounds
Contrary to the practice of the EPO, under new art. L.613-23-2 and R.613-44-8, the silence of the INPI within four months from the date of the end of the investigation phase equals rejection of the opposition. Likewise, the silence of INPI within 12 months from the filing of the request for amendment subsequent to a partial revocation decision equals rejection of this request (amended art. R.612-73-1 and R.612-73-2).
If this situation should arise, it should be possible to make a request for communication of the grounds (article L.232-4 of the code of relations between the public and the administration) within the time limit of the appeal. The INPI must give the grounds “within a month from this request. In this case, the time limit for filing an appeal against said decision is extended until expiry of two months from the day on which the reasons have been given”.
The opposition’s tacit rejection decision could also perhaps be subject to an informal appeal to the Director General of the INPI.
It will be important to monitor the various periods for obtaining grounds.
In addition to the analysis of inventive step, opposition proceedings strengthen the credibility and therefore the value of French patents, while finally giving third parties the opportunity to test the quality of the titles of competitors. In addition, the proximity of this proceedings to the opposition of the EPO should help avoid many mistakes. And this promotion of French patents a priori allows an attractive alternative strategy of proceedings without opposition through the reinforced utility certificate.
