The PACTE bill includes a reform of the French patent system, which could prove to be in vain following the text's passage in the Senate on Tuesday 5 February.
The measures envisaged
The PACTE bill initially included two patent law reforms: Article 40, which strengthens the utility certificate, and Article 42, which establishes an opposition procedure at the INPI during the granting of French invention patents. An Article 42 bis, introducing an examination of the inventive step requirement for the latter, had been adopted by amendment in the Assembly.
With regard to the utility certificate, the project introduces an extension of its duration from 6 years to 10 years, as well as the possibility of converting a certificate application into a patent application within a timeframe and procedure to be set by decree. This aims to facilitate access to industrial property by strengthening a low-cost title intended for creations that do not require protection beyond French territory.
These grounds also form the basis for the creation of an opposition procedure before the INPI, for which parliamentarians have highlighted the economic barrier that the obligation to go through contentious proceedings to request the cancellation of a patent can represent for SMEs. The procedure before the INPI is considered simpler and less costly, therefore favourable to SMEs. The establishment of an examination of inventive step at the stage of the grant procedure aims to increase the quality of French patents.
The debate sparked
It is more particularly the measure relating to the examination of inventive activity that is causing debate within the circles concerned.
Firstly, it is not certain that the measure aligns with the objectives of the PACTE law, because the issuing of patents will become more expensive, which will be a barrier for SMEs. On this point, nothing suggests that the changes made to the utility certificate will be sufficient to attract the most vulnerable economic operators.
Furthermore, the financing of the measure is questionable, particularly because the Court of Auditors stated in 2014 that this measure was not feasible, as it was too expensive, whereas the parliamentary work for the PACTE law mentions a reform with a constant workforce. In any case, it would be pointless to reform if the public authorities are not prepared to bear the cost of this measure, unless they wish to implement a system that is more expensive for the depositor and less effective due to a lack of resources, without training examiners or recruiting new ones.
In other words, unless there is a political and financial will commensurate with the stated ambition, the risk is to end up issuing low-quality patents at a higher price for everyone. Finally, the way this reform concerning the examination of inventive activity at the grant stage has been introduced is surprising: as an amendment, it is not preceded by any impact assessment and has not been subject to consultation with all interested parties. The current debates, however, prove that they are, to say the least, divided on the issue.
The vote in the Senate
After this amendment introducing Article 42bis was voted through in the National Assembly, to the surprise of interested parties, Tuesday's vote provided a new twist with the removal of this amendment by senators.
This question will no doubt spark a new debate in the Assembly if the work of the joint parliamentary committee (National Assembly and Senate), which will be meeting, does not bear fruit. This development leads us to rethink the matter. What would be the point of reforming the utility certificate in the presence of a French patent as we know it, i.e. without an examination of inventive step? None. What's more, the protection system would become even more inscrutable for SMEs/ETIs since the utility certificate would compete with the French patent without it being possible to determine the advantages/disadvantages of one over the other.
What about the opposition procedure, for example? Again, we don't see the point of this reform if the said procedure affects patents that have not undergone an inventive step examination. Admittedly, this opposition procedure will train examiners in inventive step examination with a view to a future reform of the granting procedure. But perhaps it would be wiser to invest more in the initial training of examiners rather than considering placing the burden of the risk of poor initial training on future opponents.
Whatever position is adopted regarding the INPI reform contained in the PACTE law, everyone will readily admit that without the examination of inventive activity at the stage of grant, this reform is of no interest, unless one considers that a useless, risky, and costly reform could present one. Let us therefore wager that the examination of inventive activity will continue to generate debate, but in the Assembly this time!