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01-04-2020 » Government order No. 2020-116 of 12 February 2020 : practical details in the implementation of French national patent opposition proceedings

Government order No. 2020-116 of 12 February 2020, which was published on 13 February 2020 in the French Official Journal, has introduced into the French Intellectual Property Code (IPC) provisions specifying practical details in the implementation of French national patent opposition proceedings, announced in the new law named “Loi PACTE” of 22 May 2019.

Proceedings are expected to be similar to those already used at the EPO (European Patent Office), but will be distinct on account of their hybrid nature, with purely administrative first instance proceedings before the French Patent Office (INPI) and a second, judicial instance before the Paris Court of Appeal.

1. Any natural or legal person will be able to challenge the validity of all or parts of a granted French patent based on the main grounds of invalidity (non-patentable subject matter, lack of novelty, lack of inventive step, lack of industrial applicability, lack of enabling disclosure and/or extension of subject-matter beyond the initially filed application) within a time limit of nine months starting from the grant of the patent.

The Opponent shall not be required to prove his legitimate interest in the case (standing to act), which will simplify proceedings and allow intermediates to file oppositions on behalf of third parties.

Opposition proceedings are limited to patents only, excluding utility models and supplementary protection certificates.

2. The opposition proceedings will break down into several distinct phases, which should include:

- an admission phase, which should not take more than two months, during which the admissibility of the opposition should be examined by the French Patent Office (INPI);

- an examination phase, which should take not more than 11 months and will include:

o   an investigation phase, probably during three months, during which the French Patent Office (INPI) will inform the Patentee of the opposition and the Patentee will be able to file observations and possible proposals for amendment of the claims;

o   a phase during which the French Patent Office (INPI) should provide its opinion, this phase lasting three months, the Patent Office providing its (preliminary) opinion on the grounds of opposition filed and the arguments of the parties in proceedings;

o   a written exchange phase, during which the parties will exchange written observations and the Patentee will be able to propose further changes to the claims;

o   a final exchange phase, including an oral hearing similar to that before a Court, during which the parties will be able to present oral arguments at the French Patent Office.

-  a decision phase, which should take not more than four months, following the end of the examination proceedings and leading to a decision from the Director General of the French Patent Office (INPI).

These procedural details and timeframes have been confirmed by Decree No. 2020-225 of March 6, 2020 relating to the opposition procedure to patents.

3. Opposition proceedings before the French Patent Office (INPI) should take place in conditions essentially similar to those existing before the EPO, including the use of auxiliary requests, allowing patentees to put forward different fall-back positions, with amended claims, in order to address different objections raised by Opponents.

Surprisingly, the general principle (applicable in French administrative law) according to which “silence equals refusal” will apply and the opposition would be considered dismissed if the Director General of the French Patent Office (INPI) has not taken a decision within a time limit of four months starting from the end of the examination period. The French Patent Office has announced that it would like to avoid this situation by, in all instances, taking a decision on the merit of an opposition within the applicable time limit.

At the end of proceedings, the Director General of the French Patent Office will be able to reject the opposition or alternatively to completely or partially revoke the disputed patent. In the latter case, the patentee will have to bring the patent into conformity with the decision of partial revocation.

4. An appeal against the decision of the French Patent Office will be possible before the Appeal Court of Paris, but would be subject to generally applicable legal procedural rules and the parties would have to be represented by barristers.

This judicial second instance could make proceedings significantly more complex given that mandatory time limits for filing written submissions in appeal will apply (although harmonized to three months for all parties) and the parties will have to provide their submissions and exhibits to the French Patent Office by registered mail with acknowledgment of receipt.

In another distinction with respect to opposition proceedings before the EPO, the opponent during such appeal proceedings after first instance opposition proceedings concerning a French national patent, would be able to bring new grounds (legal basis for objection and arguments) in pursuit of his request to revoke the patent and also provide new exhibits, including new prior art documents.

Although not formally party to appeal proceedings, the Director General of the French Patent Office will be able to provide written and oral submissions and, more surprisingly, would be able to challenge the decision handed down by the Appeal Court before the French Supreme Court (“Cour de Cassation”).

5. Apart from certain aspects concerning French overseas territories, the new provisions entered into force on 1st April 2020 and apply to patents whose mention of grant was published in the Official Gazette of Intellectual Property starting from 1st of April 2020.

6. The opposition fee has been set at 600 Euros through a Decree of 6 March 2020 relating to the French Patent Office procedural fees.

Each of the parties will have to settle its own expenses, except in the case of a decision of the Director General of the French Patent Office ordering a different approach of the sharing of costs which would be limited according to a pre-established cost schedule.

7. Decree No. 2020-225 of March 6, 2020 relating to the opposition procedure to patents, has confirmed some practical details and should be completed by a decision of the Director General of the French Patent Office.

The setting up of opposition proceedings combined with the strengthening of the examination proceedings for patent applications before the French Patent Office, seems to be consistent and raises the level of scrutiny in French patent law to that of other major legal systems.

Counsel active in patents and other stakeholders will be following with interest the development of these new procedures.

The staff of Cabinet Beau de Loménie are at your disposal to discuss with you these new provisions and the new strategic choices open to companies on the French market.

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