An ordinance modifying the Intellectual Property Code (IPC) has just been published in the Official Journal. It aims at harmonizing the IPC in accordance with the legal texts implementing the unitary patent and the Unified Patent Court (UPC).
This ordinance will enter into force at the same date as the entry into force of the UPC Agreement, that is to say the 1st day of the 4th month following the German ratification.
This ordinance comes a few days after the ratification of the Agreement by the UK in a context where Brexit had cast doubts about the possibility of such a ratification and thus, on the continuation of the project. As from today, entry into force of the UPC Agreement only awaits ratification by Germany which will not intervene before the decision of the German Constitutional Court, which must decide whether the Agreement is in conformity with the constitution.
Several subjects raised in the ordinance will definitely have an impact on patent litigation, and on the patent practitioners regarding litigation and contractual issues. Notably, the ordinance states that:
- dual protection is possible with a French patent and a European patent not subject to opt-out,
- the concept of exhaustion of rights is amended : the consent of the patent holder as to the first commercialization of the product, does not need to be necessarily stated,
- the possibility for a non-exclusive licensee to initiate an infringement action (if the license allows for it), or
- the patentinvalidity action f is not subject to a statute of limitations.
The invalidity actions of patents will thus escape the statute of limitations, which will bring an end to the hot topic on the starting point of the period of limitation, for which, currently, the First Instance Court and the Court of Appeal of Paris assess an application “in concreto” of the five-year statute of limitation. The provisions stipulating that invalidity actions are not subject to a statute of limitations will apply to all patents: European patents, European patents with unitary effect and French patents, according to a new article L615-8-1 IPC.
Please note however that this provision will not apply to actions already time-barred at the date of the entry into force of the ordinance.
Another provision of the ordinance allows the non-exclusive licensee to initiate an infringement action, under two conditions: (1) the license agreement must authorize such action, and (2) the licensee must inform the patentee before initiating the action for infringement.
The conditions for application of the provisions of the ordinance will be detailed in a decree, still awaited.
To sum up:
- an ordinance of May 9, 2018 prepares the entry into force of the UPC and amends the IPC ;
- the ordinance will impose the non-applicability of the statute of limitation to patent invalidity actions for all patents (not only to those with unitary effect) ;
- the non-exclusive licensee will be able, if stated in the license agreement, to file infringement actions.