PACTE Act: what about the statute of limitations on actions for invalidation of industrial property titles?
The industrial property aspects of the PACTE bill focus on a reform of INPI. The debates relating to this reform have overshadowed the amendment proposing the imprescriptibility of actions for the annulment of industrial property titles, which was presented and then withdrawn during the debates at the National Assembly, even though the said amendment is of fundamental importance.
The accuracy of the statement that actions for the annulment of industrial property titles are imprescriptible appeared salutary. Indeed, as a reminder, recent case law applies the common law five-year limitation period of Article 2224 of the Civil Code to these actions. However, beyond the discussions relating to the legitimacy of this application, everyone agrees that it is inappropriate, particularly due to the variable nature of the starting point from which the limitation period begins to run.« from the day on which the holder of a right knew, or ought to have known, the facts enabling him to exercise it«Thus, in patent law, for example, case law has notably accepted that this starting point could be the date of filing the patent application, the date of publication of the grant notice, or the date of the patent holder's formal notice.
Two grounds have justified the rejection of the amendment in question. Firstly, Order No. 2018-341 of 9 May 2018 relating to the European patent with unitary effect and the unified patent court already includes such imprescriptibility in patent law.
Next, the transposition of Directive No 2015/2436 of 16 December 2015 on the approximation of the laws of the Member States relating to trademarks (the so-called «Trade Marks Package» reform) will very soon make it possible to do the same for trademark law. However, these arguments do not stand up to scrutiny.
On the one hand, the entry into force of the Order of 9 May 2018 depends on the ratification of the Unitary Patent Court (which remains for the moment indefinitely postponed, or rather German, given that ratification by Germany is blocked following an appeal to its Constitutional Court) and it does not include any transitional provision.
On the other hand, while it is true that the case of trademark law may soon have a happy outcome, the same cannot be said for other industrial property titles.
However, there is no doubt that applying the five-year statute of limitations to actions for annulment is ill-advised, if only because of the cleansing function these actions perform against null and void titles which constitute unjustified exceptions to the freedom of trade. A new amendment proposing that all actions for annulment be imprescriptible would therefore be timely during the Senate debates. In this case, interim provisions would be essential for the new law to apply to all titles producing their effects on the date of its entry into force and thus prevent recent case law from continuing.
Such an initiative would finally put an end to a sorry saga that interested circles would prefer to become a distant memory as soon as possible.