Order N°2018-341 of May 9th, 2018, Regarding Unitary European Patents and The Unified Patent Court

After the ratification of the Unified Patent Court Agreement (UPCA) by the United Kingdom on April 26th, France has just adopted new Order n°2018-341 of May 9th, 2018, regarding Unitary Patents and the Unified Patent Court (the “Order”).

While this new law intends to amend the French Intellectual Property Code in view of the upcoming changes with Unitary Patents (“UP”) and the Unified Patent Court (“UPC”), it is supposed to have a wider impact on patent law in France.

1. The Order mostly manages the place of the future UP in the French legal system as well as the coexistence of French patents and European patents, unitary or not.

Regarding the coexistence of UPs and other patents, the Order provides that, contrary to the current situation, UPs and French patents on the same invention, by the same owner and inventor sharing the same filing or priority date may coexist. They may not, however, be assigned or given in license to a third party independently from one another. It appears that this possible coexistence of national patents and UPs will apply in most European countries designated by UPs.

European patents falling within the scope of UPC’s exclusive jurisdiction (no opt-out) may also coexist with French patents and may not, either, be assigned or given in license to a third party independently from one another.

A European patent opted-out of the UPC’s exclusive jurisdiction, however, may not coexist with French patent covering the same invention. In this situation similar to the current one, the French patent will stop producing its effects (for common parts) once the opposition period for the European patent has expired, once a filed opposition against the European patent has been decided upon or once the patent holder has opted-out of the UPC’s exclusive jurisdiction. The Order also provides that if said French patent is granted after the occurrence of one of these three events, it will not produce any effect.

The Order also provides that the French Patent Office (INPI) will be in charge of the publication, in France, of all opt-out choices regarding patents as well as the potential further opt-in.

2. However, the Order also changes some aspects of French patent law.

For infringement claims, article 11 of the Order changes the conditions on which an exclusive licensee may file a patent infringement claim.

For instance, whereas before the Order, this claim could only be brought by the exclusive licensee if the patent holder refused to bring it itself, the exclusive licensee may now bring the claim to court itself after simply informing the patent holder of its intention to do so (except if the exclusive license agreement excludes such right). These new provisions now create specificity for patent law, whereas trademark law and industrial design law still remain on the previous system.

Regarding the non-exclusive licensee, it could, before the Order, only intervene in infringement proceedings to obtain compensation of its own damages. Now, it may initiate infringement proceedings on two conditions: it is expressly authorized by the license contract and the licensee has to inform the patent holder before filing a legal action.

The Order also changes the statute of limitations regarding patent infringement claims and patent invalidity claims. For infringement claims, the statute of limitations is of 5 years from the date where the plaintiff has had or should have had knowledge of the facts leading to the claim. After a lot of debates before the French courts, patent invalidity claims are imprescriptible.

3. All of these changes will enter into force on the date where the UPCA also does. Therefore, the French legislation will only change once Germany has also ratified the UPCA and this Order remains, at this stage, prospective law.

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