In Intellectual Property matters, major changes in law or procedures often come into force on “April Fool’s Day”. This is the case today with the entry into force of the patent opposition procedure before the French IP Office (INPI).
During the patent grant procedure before the French IP Office (INPI), the examiner determines whether the patentability criteria are fulfilled by the patent application. At the end of the procedure, the examiner grants a French patent. The grant procedure is an ex parte procedure, third parties are not party to the procedure.
It is possible that the French patent be granted, where the examiner would have missed an important detail which would have rightly prevented the grant of the patent, in particular a relevant published prior art.
Until now, in such cases it was necessary to file for a lawsuit before the High Court of Paris (Tribunal de Grande Instance) to be able to question the validity of the patent, with the related procedural constraints, in particular the constitution of a specific attorney-at-law.
Change of law (L. 613-23 s. French IP code)
From now on, it will be possible to initiate a specific procedure before the INPI in order to question the validity of the patent, being a party to the procedure. This is the subject of the new opposition procedure before the INPI (inter partes procedure).
The deadline for initiating an opposition proceedure expires 9 months from the publication of the grant of the patent in question (R. 613-44 IPC).
The procedure applies to patents granted from April 1, 2020 onwards (Ord. N ° 2020-116 of 02/12/2020).
Risks to be assessed
If one of your competitors obtains a patent granted by the INPI unfairly, without the patentability criteria being met, the competitor would have the right to initiate against you an infringement seizure, a provisional prohibition procedure, an infringement action …
In such cases, the only option would be bringing an action for a declaration of invalidity before the High Court of Paris, but the case can only be ruled after a long procedure before the Court.
To avoid this type of situation, the opposition procedure makes it possible to deal ahead of time with the problem of patents whose validity is questionable.
Prior to this, the most suitable situation would be to set up a surveillance of the patents and applications of your main competitors to determine if some are unjustified and should be the subject of opposition proceedings.
The same recommendations also apply to European patents, for which the opposition procedure was already in force.
Being assisted by a Patent Attorney makes it possible interallia to ensure that relevant arguments are filed and to limit the risks of rejection of the opposition.
SOTERYAH IP remains at your disposal to organize surveillance strategies for this purpose.