The PACTE bill includes reforms to industrial property. The proposed measures are generating debate among interested parties. The bill introduces three reforms to patent law. Article 40 strengthens the utility certificate. Article 42 establishes an opposition procedure at INPI for the granting of French invention patents. Article 42 bis introduces an examination of the inventive step requirement for the latter.
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 reasons also form the basis for creating an opposition procedure before the INPI, for which parliamentarians have highlighted the economic obstacle that the obligation for SMEs to go through contentious proceedings to request the cancellation of a patent can represent. The procedure before the INPI is considered simpler and less costly, and therefore favourable to SMEs. The introduction of an examination of inventive step at the patent granting stage aims to improve the quality of French patents.
It is more particularly the measure relating to the examination of inventive activity that is sparking debate among interested circles. Firstly, it is not certain that the measure aligns with the objectives of the PACTE law, as patent applications will become more expensive, which will be a hindrance 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 political and financial will commensurate with the stated ambition, the risk is that low-quality degrees will be awarded at a higher price for everyone.
Finally, the way this reform regarding the examination of inventive activity at the grant procedure stage was introduced is surprising: as an amendment, it was not preceded by any impact assessment and was not subject to consultation with all interested parties. However, current debates prove that they are, to say the least, divided on the issue.
Finally, the question raised is that of the relevance of a tendering process for the French patent compared to the European patent. While the interest of such a tendering process appears questionable today, the entry into force of the future Unified Patent Jurisdiction (UPJ) could justify the strengthening of the French patent, particularly when it will no longer be possible to derogate from the exclusive jurisdiction of the UPJ for litigation involving European patents without unitary effect.
As the cost of litigation will likely be more expensive before the JUB, it will then certainly be interesting to defend one's rights before the French judge at a lower cost. This perspective would, however, require the prior removal of the impossibility of directly designating France in international applications under the Patent Cooperation Treaty (PCT), knowing that at present, designating France requires going through the European route.