An extract from The Intellectual Property Review, 9th Edition

Recent developments

Decree No. 2019-1169 of 13 November 2019, implementing Directive (EU) 2015/2436 of 16 December 2015 relating to trademarks, provides an in-depth reform of domestic trademark protection. On the trademark application side, the graphic representation of the sign is no longer a requirement. The Decree gives exclusive jurisdiction to the National Institute of Industrial Property (INPI) for claims for nullity based on prior trademark rights and for revocation of trademarks, while maintaining the exclusive jurisdiction of the courts for claims for nullity based upon other grounds or for nullity or revocation arguments as counterclaims. It extends the claim for nullity before the INPI to any natural person or organisation, without the need to show standing. The Decree extends the list of permitted claimants for infringement to any licensee, even non-exclusive ones.

Trends and outlook

The French government has been willing to raise the quality of granted domestic patents to make these more reliable and valuable assets, easier to extend at an international level. In this respect, the following will change in 2020:

  1. on 1 April, Article L. 613-23 will be inserted into the French Intellectual Property Code, creating an after-grant opposition procedure against French patents delivered by the INPI to allow third parties to request the revocation or amendment of a patent through administrative proceedings. Any party will be able to oppose the granted patent within nine months of the publication of the grant in the French patent office gazette; and
  2. on 22 May, new Article L. 612-12, I, 7° of the French Intellectual Property Code will come into effect, making inventive step a ground for rejection of a domestic French patent application at the examination level by the INPI. These provisions will be applicable to domestic French patent applications filed as of this date.