Following a series of interviews, Audrey GARCIA-COUSTEAU, Lawyer at SATT Sud-Est, co-edits this series of articles. Concerning the novelties in terms of legislation and innovation, Dien Vinh HOANG-DINH, Patent Engineer at SATT Sud-Est, speaks in this second episode.
On the menu of episode 2: the intellectual property aspect of the PACTE law and the competitiveness of French companies, what's new and what are the impacts?
The PACTE law, published on May 23, 2019, provided for the gradual entry into force of several measures relating to industrial property and in particular patents in order to promote the growth of French SMEs by facilitating innovation. These measures have been deployed in stages, with the latest coming into force in July 2020.
Dien Vinh, what are the issues addressed by the measures introduced by the PACTE law?
Starting from the observation that only 21% of SMEs are patent holders whereas 57% of large groups file patents and that French SMEs file four times fewer patents than German SMEs, the PACTE law aims in particular to " take up the challenge of business growth, at any stage of their development ". When a start-up is looking for financing, holding a patent is a strong argument for investors to successfully raise funds.
The whole point of the industrial property section of the Pact law is to adapt the existing framework to new practices and thus best support the growth of companies by encouraging them to use patents and by increasing the quality of protection for innovations.
Two main axes emerge. One concerns the strengthening of procedures to improve the quality of granted patents and thus establish the solidity and legal security of the French patent through the development or implementation of new procedures to improve the granting and defence of industrial property titles. The objective is to increase confidence in the titles, particularly among investors.
The other aims to meet the needs of companies with access routes more adapted to the various innovation protection devices. The measures introduced to meet this objective show a real desire to ensure access to intellectual property titles adjusted to the different maturity cycles of innovations and thus enable companies to consider their intellectual property strategy in a more agile way in terms of protection, time to obtain and cost.
Can you tell us about the measures introduced by the PACTE law to improve the protection of inventions?
With regard to patents, the PACTE law makes four substantial amendments concerning the protection of inventions. The first flagship measure concerns thestrengthening ofthe patentexamination procedure. When examining the patentability of inventions, the National Institute of Intellectual Property "INPI " will now be able to reject a patent application, not only on the criterion of lack of novelty, but also for lack of inventive step. This more complete examination of the patent application meets the objective of strengthening the strength of French patents by increasing certainty as to their validity.
In addition, the law establishes an opposition procedure before the INPI following the grant of a French patent. This new procedure allows any third party to contest the validity of a patent within nine months of the grant of the title. Before the PACTE law, a third party wishing to challenge a French patent could only act before the Paris Court of First Instance to invalidate a patent.
Another measure is the provisional patent application, which aims to provide access to intellectual property for individual inventors, SMEs and start-ups, by offering an easier alternative. The provisional application makes it possible to date in terms of anteriority with a simplified content. The applicant has 12 months to claim priority or convert the application into a patent application or choose the utility certificate.
Finally, the PACTE law enhances the value of the utility certificate by extending the term of protection from 6 to 10 years and the possibility of converting it into a patent application within approximately 16 months of filing. Any company will be able to assess the interest of the invention and decide later on whether to opt for a patent. Also, the aim is to make the utility certificate an alternative, by making it more durable. However, this title remains less valuable than the patent, in that it does not give rise to any research report.
Entry into force of measures concerning industrial property
Ultimately, the changes made to these systems are intended to ensure that companies, and in particular SMEs, take over industrial property in order to protect their inventions more systematically by giving them greater leeway in implementing their strategy.
To go further
- Read Episode 1: The Single Agent in Support of Research Commercialization
- Discover the Law n° 2019-486 of 22 May 2019(JO23May) relating to the growth and transformation of companies, known as the "Pacte Law".
- Take note of the order n°2020-116 of February 12, 2020 relating to the creation of a right of opposition to invention patents
- Consult the new measures on the utility certificate
- Visit the INPI website