On 10 May 2018, France’s Journal official published Ordonnance n° 2018-341 du 9 mai 2018 relative au brevet européen à effet unitaire et à la juridiction unifiée du brevet. This law, which will come into force when the Unified Patent Court (UPC) Agreement comes into force, aims to implement the unitary patent and UPC system in France, mainly by amending the patent provisions in the Intellectual Property Code. However, the law will also introduce other (non-UPC related) changes to French patent litigation (for example, to limitation periods). The following outlines the changes.
- ‘Double-protection’ (or so-called ‘double-patenting’). Double-protection by a French national patent and a patent subject to the exclusive competence of the UPC will be permitted, i.e. the same invention with the same inventor and the same filing or priority date may be protected by both a French national patent and a unitary patent or the French designation of a European patent that has not been opted-out of the UPC’s exclusive jurisdiction (pursuant to Article 83(3) of the UPC Agreement). However, double-protection by a French national patent and the French designation of a European patent that has been opted-out will not be permitted (reflecting the current position). In the case of double-protection, the two patents cannot be assigned or licensed separately.
- INPI’s register. INPI (L'Institut national de la propriété industrielle, the French IP Office) will publish the registration of unitary patents, and also (for French designations of European patents) opt-outs and withdrawal of opt-outs.
- Transition period: jurisdiction and law. Article 21 of the law provides that during the UPC’s seven year transitional period (Article 83(1) UPC Agreement) an action for infringement or revocation of the French designation of a European patent may be brought either before a French national court or the UPC (and if the action is brought before a national court but is pending at the end of the transitional period, it will continue in the national court). Although this provision reflects Article 83(1) and (2), it does not state that this dual jurisdiction only applies if the patent has not been opted-out (pursuant to Article 83(3)) – presumably this will be implied, but the provision does appear to raise some unanswered questions as to its effect on French courts’ jurisdiction and the interaction with the UPC jurisdiction. Nor does the law state whether a French court hearing such an action (for a non opted-out European patent) should apply French national law or the UPC Agreement; the UPC Preparatory Committee’s view is that Article 83 should be interpreted to mean that a national court would apply national law (see here). It should be noted that the law does not bring some substantive provisions of French patent law into line with the provisions of the UPC Agreement. For example: the law does not amend the French Bolar-type exemption from patent infringement and this is considerably broader than the exemption in the UPC Agreement (Article 27(d)); and nor does the law introduce an ‘interoperability’ provision equivalent to Article 27(k) UPC Agreement, which provides that acts permitted by Articles 5 and 6 of the Software Directive will not constitute patent infringement. Differences between national patent law and ‘UPC law’ are likely to lead to forum shopping as between national courts and the UPC for non opted-out patents in the transitional period. Differences will also be relevant to litigation of unitary patents in perpetuity, as, under Articles 5 and 7 of the Unitary Patent Regulation (1257/2012), the law relating to infringement is determined by proprietorship (i.e. the patent applicant’s residence or place of business).
- Exhaustion of rights. The exhaustion of patent rights provision will be amended: in the case of the product having been marketed by a third party, to remove the requirement for the patentee to have expressly consented; and to provide that there will be no exhaustion if there are legitimate reasons for the patentee to oppose further marketing of the product. These changes reflect the exhaustion of rights provision in the UPC Agreement (Article 29).
- Licensees bringing infringement actions. The rights of patent licensees to initiate infringement proceedings will change. An exclusive licensee will have the right, provided that the licence does not exclude that right and the licensee first informs the patentee. (Currently, an exclusive licensee only has the right if the patentee does not initiate proceedings if requested to do so.) A non-exclusive licensee will have the right if expressly provided for in the licence and the licensee first informs the patentee. (Currently a non-exclusive licensee may only intervene in proceedings initiated by the patentee in order to claim its own damages.)
- Limitation periods. The limitation period for a patent infringement action will remain five years, but will commence when the right-holder knew, or should have known, the facts allowing him to make the claim (whereas currently the provision refers only to five years from those facts, i.e. without referring to awareness). This amended provision in the IP Code will correspond to the limitation period in the Civil Code (Article 2224). However, the IP Code will include a new provision that an invalidity action is imprescriptible. This is surprising as the French courts have been applying Article 2224 of the Civil Code to patent invalidity actions.