2020/04 > Important information regarding the French patent examination proceedings
ERRATUM (May 6,2020)
Further to a clarification from the French Patent Office, the new procedure for examination of patent applications by the French Patent Office will enter into force on May 22, 2020 (and not May 23, 2020 as erroneously referred to in the below message).
The new examination procedure will apply to French patent application filed as from May 22, 2020.
Please disregard the information on the website of the French Patent Office erroneously referring to an entry into force on May 23, 2020, which should shortly be corrected (https://www.inpi.fr/fr/comprendre-la-propriete-intellectuelle/les-enjeux-de-la-propriete-intellectuelle/loi-pacte-la-propriete-industrielle-s-adapte-aux-nouvelles-attentes-des-entreprises).
The staff of Cabinet Beau de Loménie are at your disposal to discuss these different points with you.
The so-called « PACTE « law of 22 May 2019 has overhauled patent examination proceedings at the French Patent Office (INPI) by changing the way in which the French Patent Office may proceed in the assessment of patentability of an application and by allowing third parties to challenge granted patents in opposition proceedings.
The provisions concerning opposition proceedings before the French Patent Office entered into force on 1st April 2020. They are intended to apply to any French national patent for which the mention of grant was published after 1st April 2020 (please see our Flash in April 2020).
As for the new procedures for the assessment of patentability by the French Patent Office and the criteria for refusal of an application, these will enter into force as of 23rd May 2020.
Thus, French patent applications, which will be filed as of 23rd May 2020, will be subjected to the « new » system of examination, including a detailed evaluation of the main criteria of patentability, in particular novelty and inventive step.
It should be recalled that, up to now, the ability of the French Patent Office to refuse a patent application was essentially limited to the situation where there was a « clear » lack of novelty.
The new wording of Article L. 612-12 of the French Intellectual Property Code (« CPI ») will soon allow the French Patent Office to refuse a patent application:
- which aims to protect non-patentable subject-matter as defined in Articles L. 611-16 to 611-19 CPI (covering the main exclusions from patentability), and not only subject-matter « clearly » non-patentable in view of these articles;
- whose subject-matter cannot be considered as an invention in the sense of Article L. 611-10 2° CPI (simple discoveries, mathematical methods, esthetic creations, presentations of information, etc.), and not only subject-matter « clearly » not to be seen as potentially patentable in view of this article;
- which is not patentable in the sense of Article L. 611-10 CPI 1st paragraph, i.e. directed to subject-matter showing a lack of novelty, inventive step or industrial applicability, and not only a « clear » lack of novelty.
It is too early to give an opinion on the degree of strictness that the French Patent Office will apply in assessing inventive step, although it seems likely that the standard applied should not be very different from that commonly encountered in proceedings before the European Patent Office.
Applicants for French national patents thus have an interest in reviewing their portfolio of inventions and patent applications that have not yet been filed in France, in order to check whether there would not be strategic value in filing a French patent application before the entry into force of the new procedure for examination of patent applications by the French Patent Office.
The staff of Cabinet Beau de Loménie are at your disposal to discuss these different points with you.