Chambers Patent Litigation 2021 Guide
| Published date | 29 March 2021 |
| Subject Matter | Intellectual Property, Patent |
| Law Firm | Gowling WLG |
| Author | Ms Céline Bey and Clémence Lapotre |
Céline Bey and Clémence Lap'tre have written the French Chapter of the 2021 Chambers Patent Litigation guide. It provides the latest information on patent rights (granting procedures, initiating a patent infringement lawsuit, patent revocation/cancellation, patent remedies, litigation costs, alternative dispute resolution (ADR), and assignment and licensing of patent rights).
In France, the Paris Judiciary Court ruled that it had jurisdiction to hear claims from an SEP implementer against both the SEP holder and the European Telecommunications Standards Institute (ETSI) in order to have them set a FRAND rate for a worldwide FRAND offer. In its decision of February 2020, the Court held that ETSI is domiciled in France and that the claims against the SEP holder were so closely connected to those against ETSI that they had to be heard together.
In the pharmaceutical sector, the Paris Judiciary Court had the chance to consider the Pemetrexed and vitamin B12 case, and awarded a record high EUR28 million in provisional compensatory damages for patent infringement, a record in Europe. This decision of 11 September 2020 also found that a generic product was literally infringing even though the active principle was commercialised in a different pharmaceutical form than the one literally mentioned in the patent claims.
In 2020, the legal provisions creating an after-grant opposition procedure against French patents granted by the French National Institute of Industrial Property (INPI) entered into force, allowing third parties to request the revocation or modification of a patent through administrative proceedings. This applies to all French patents where the grant was published as from 1 April 2020.
Patent Litigation 2021
- Intellectual Property Rights and Granting Procedure
- Initiating a Patent Infringement Lawsuit
- Patent Infringement
- Patent Revocation/Cancellation
- Patent Litigation: Trial and Settlement
- Patent Litigation Remedies
- Appealing Intellectual Property Cases
- Patent Litigation Costs
- Alternative Dispute Resolution in Intellectual Property Matters
- Assignment and Licensing of Intellectual Property Rights
1.1 Types of Intellectual Property Rights
The French Intellectual Property Code (IPC) provides three types of intellectual property rights for the protection of inventions, namely patents, utility certificates and supplementary protection certificates.
French patents are granted for inventions which are products or processes that are new, inventive and capable of industrial application, provided that such inventions are not excluded from patentable subject matter. Patent rights arise from the filing of an application with the French Office for Intellectual Property (INPI).
Similarly, an inventor can also file for a French utility certificate with the INPI and obtain protection identical to a patent but for a shorter duration. Since 11 January 2020, applicants can convert a utility certificate application into a patent application (Article L. 612-15 IPC introduced by the Law PACTE - implementing into French law the Directive 2015/2436/EU of 16 December 2015 approximating the laws of the member states relating to trademarks and the European Union Trademark Regulation (EU) No 2017/1001 of 14 June 2017).
Supplementary protection certificates are further discussed in 1.6 Further Protection for Technical Intellectual Property Rights after Lapse of Maximum Term.
France is a party to the European Patent Convention (EPC) and may therefore be a designated jurisdiction in a European Patent. Likewise, France is a party to the Patent Cooperation Treaty (PCT) and may consequently be designated in a PCT application as a party to the EPC.
In addition, the EU directive 2016/943 - implemented into French law (Article L. 151-1 of the French Commercial Code) by the Law on Trade Secrets of 20 July 2018 - protects trade secrets (ie, information that is secret, has commercial value because of its secrecy and has been subject to reasonable steps to keep it secret against its unlawful acquisition, use and disclosure).
France is a statute-based jurisdiction and uses case law mainly for the purposes of construing applicable statutes. The IPC contains the core of French patent law.
1.2 Grant Procedure for Intellectual Property Rights
Patents
The grant procedure for both French and European patents begins by filing an application with the INPI or the European Patent Office (EPO), respectively.
As for the French procedure, the INPI examines the application within two to five months from the filling date. As a result of the Law PACTE, the INPI now has the authority to refuse an application for lack of inventive step, where previously the INPI could only refuse a patent for lack of novelty or non-industrial applicability. Then, the INPI transmits to the applicant a prior art search report with its opinion on the patentability of the invention. Within three months from receipt of these documents, the applicant can respond to the INPI's observations and/or, if relevant, amend its claims.
The EPO procedure slightly differs as the prior art search report and the opinion on patentability is transmitted before any substantive examination of the application. This allows the applicant to consider the strength of the application and thus abandon it or pursue for further examination.
The publication of application in the Official Bulletin of Industrial Property (BOPI) for French patents or on the EPO's website for European patents occurs 18 months after the filing date.
As for the French procedure, within a period of three months from publication, the applicant may receive observations from third parties to which they must reply. At the end of this period, the INPI establishes a final report and, provided that the registration fees are paid, the patent is generally granted within six months.
As for the EPO, within six months from the publication, the applicant can decide to abandon or pursue with an examination on the merits by the EPO. During this period prior to the grant, the EPO may require the applicant to provide additional information or to respond to some of its observations.
Utility Certificates
The grant procedure for a French utility certificate is essentially the same as the above-mentioned patent procedure, with the exception that it does not involve any prior art or substantive validity examination by the INPI. Publication of the application occurs 18 months after the filing date or priority date, if any.
Trade Secrets
There is no grant procedure for trade secrets, as protection is automatically conferred to the person lawfully in control of confidential information for which reasonable steps have been implemented to preserve its secrecy.
1.3 Timeline for Grant Procedure for Intellectual Property Rights
Patents
The grant procedure for French and European patents can last several years and will depend on the complexity of the invention and the technical field concerned.
On average, it takes from two-and-a-half to four years for the INPI and four years for the EPO, to grant the patent after the filing date.
Representation by a qualified attorney is not mandatory before the INPI, but is recommended. Similarly, applicants can file European patent applications themselves, unless their residence or place of business is located outside an EPC contracting state.
Obtaining a patent entails costs for the drafting and the examination process handled by the patent attorney, official taxes and the annual fees.
Official taxes are payable to the INPI: EUR26 for the filing of the application, EUR520 for the search report and EUR90 for the granting of the patent. Fee reductions may apply for individuals, education or research non-profit organisations and small companies. Patent attorneys' fees range between EUR3,000-5,000, but ultimately depend on the complexity of the invention and concerned technical field.
As for European patents, the total procedure costs approximatively EUR6,100 (or EUR5,875 for online applications).
Utility Certificates
The grant of a utility certificate usually takes two years after the filing. The above patent fees equally apply to utility certificates, with the exception of the search report fee.
1.4 Term of Each Intellectual Property Right
Protection for both French and European patents lasts for a period of 20 years from the application date, provided annual fees are duly paid.
Since 23 May 2020, utility certificates are granted for a period of ten years from the application date.
Trade secrets are protected indefinitely, until they are disclosed to the public.
1.5 Rights and Obligations of Owners of Intellectual Property Rights
Patentee Rights
The patentee has the exclusive right to exploit the patented invention during a 20-year term.
In particular, the patentee has the exclusive right to use the invention to manufacture and put on the market the patented products or those obtained by the patented process. The patentee is also entitled to assign or license their rights and decide who can use, make, distribute or sell the patented invention. Unauthorised use of the invention qualifies as an infringement for which the patentee may request an injunction and obtain damages.
Patentee Obligations
In France, the patentee must exploit the invention, failing which any third party can request the grant of a compulsory licence before the Paris Court of First Instance (Article L. 613-11 IPC). A patent is deemed unexploited if, in the absence of any lawful excuse, at the end of a three-year period after the grant, or four years from the application date, the patentee:
- has not exploited the patented invention or made effective and serious preparatory measures to do so;
- has not marketed the patented products in sufficient quantity to satisfy the French market's needs; or
- has abandoned the exploitation of the patent for more than three years.
Lastly, an annual fee shall be paid to...
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