Formerly enterprise tsar at the French finance ministry, Pascal Faure played an integral part in drafting the second part of the PACTE law, which has overhauled patent and trademark regulations in France. Head of the country’s national IP institute since September 2018, Faure delves for Leaders League into what the law means for IP worldwide.
Leaders League. What’s been your roadmap since joining the INPI?
Pascal Faure. I have drawn heavily on my experience at the finance ministry, where I grew to appreciate the issues the IP industry faces. At the INPI, I aim to establish a new dynamic within the organization, in order to facilitate SMEs becoming more competitive and help them better protect and make the most out of their inventions – and to be able to do so not just in this country, but at a global level.
We have three key priorities in this regard. The first is to make sure that the protection available for patents and trademarks is at once more easily accessible and more robust. This is where the PACTE law comes in. The second consists of improving IP appropriation for companies, by supporting them at national and regional level. Finally, we aim to reaffirm France’s standing on the international IP stage. It is worth recalling that France was a key signatory to the Paris Convention on Intellectual Property of 1883, which was one of the first pieces of legislation covering patents and trademarks. France was also the country behind the creation of the European Patent Office.
Yet, while IP has always been in our nation’s DNA, the world of IP is getting ever more complex, and so we must bolster our presence in all those organizations across the globe that call the shots when it comes to IP protection. On that note, I am delighted to have recently been elected to the board of the European Patent Office, the first Frenchman to hold such a position in a decade. This sends a strong signal.
How does the INPI operate internationally?
The INPI has a significant international network, consisting of a dozen regional correspondents working out of various embassies across the globe. Our newest office opened in West Africa and covers 17 countries. When you operate across many regions, as the INPI does, it is essential to adhere to the norms of the World Intellectual Property Organization (WIPO).
The second thing that needs to be done is to support grassroots level innovation and help companies deal with everyday IP issues. Our agents are adept at decoding the local landscape and creating useful dialogue to alleviate the IP problems that French companies face abroad. We are, at heart, a facilitator.
France’s PACTE law of 2019 is designed to make it easier for SMEs to operate, as it gives greater protection to the IP they generate. Will it make a difference?
The PACTE Law is a boon for the French IP ecosystem. It will prove to be a watershed piece of legislation. There has been a collective realization among our political leaders of late that IP rights are a vital component of the country’s international competitivity. The changes made in the PACTE law relating to patents and trademarks are without precedent.
“The exclusively French patent is very valuable in terms of competition strategy”
Are France-only patents still attractive to companies whose ambitions are often international?
The exclusively French patent is very valuable in terms of competition strategy, because it is very rare that it can go directly from nothing to Patent Cooperation Treaty status when it comes to seeking patent protection in China or the United States, for example.
Before looking to take a patent international, it’s important to have a solid patent in one’s own country. In France, this can be done for the price of €650 – and that covers all costs from initial application to eventual granting, which is not expensive compared to what a similar level of protection costs in other European countries.
Once this step has been taken, an individual has twelve months to secure the patent for other countries. The individual or company making the patent application also benefits from an IP rights research report. Having a French patent is, therefore, an excellent way of getting IP protection at a low price and buying yourself time to demonstrate the originality of your invention at an international level.
Among the most eye-capturing measures of the PACTE law is the importance it assigns to the provisional patent request. How does this change help SMEs?
Streamlined and inexpensive, this measure will effectively grant access to IP protection for small businesses. In France, the certificate gives the owner first refusal on the development of their invention. This protection is not well enough appreciated, since most people go down the full-patent route. In order to make the provisional patent request more effective, the PACTE law envisages a lifetime of between six and ten years, just as the German version has. This gets it closer to the lifetime of a full patent, which is typically 20 years.
As regards the provisional patent, it can be backdated, requires a less detailed product description and doesn’t need to be accompanied by a full claim. The person making the request has a year to complete all the necessary formalities, in line with the classic patent request, and if at the end of this time they choose not to take things further, they can opt for a certificate of use instead.
The other major provision in the PACTE law is the opposition procedure, which seeks to enforce the validity of French patents. How does this change the INPI’s role?
This procedure is a real first. Previously, the INPI’s role ended with the granting of a title. This procedure allows us to impose an opposition a maximum of nine months following the granting of a patent or trademark. The measure seeks to re-establish a good balance between large, small and medium-sized companies when it comes to IP protection, because, prior to the PACTE law, the only recourse for an SME looking to get a French patent cancelled was to go to court, which is a long and costly process. The third notable component of this law is the revision of the procedure for examining patent applications. Will this be vital in building trust in France’s patent system?
I would say so. Before handing someone a patent, three categories now need to be satisfied; novelty, industrial application and, thanks to the PACTE law, inventive activity. This means that, in France, the relevant authorities can now reject a request for a patent on inventive activity grounds, which is something that all major patent offices around the world have been able to do for some years. France needed to get with the programme on this. We can now offer IP titles with the same level of protection as those available elsewhere. In today’s globalized world, this is vital.
There’s one final aspect: the modification of deadlines concerning counterfeiting and nullification. What was the thinking here?
This modification is going to allow companies and individual entrepreneurs to be better protected. Today, the gap between making a complaint and taking action on counterfeiting can be up to five years, which is too long. And while this timeframe remains, the PACTE law will put an end to different legal loopholes, which should speed things up.
Concerning nullification, a ruling will, from now on, be inalienable. The PACTE law has removed the common law delay aspect and in doing so has broadened the scope for nullification. Once again, the idea here is to make competition fairer for all.
How will we be able to measure the success of the PACTE law? What are the indicators to look out for?
The main objective of these measures is to improve the quality of patent and trademark titles, but in terms of indicators, I couldn’t really say. What is certain is that when a company has to put its IP fate in the hands of the courts, it will be much better equipped to get a positive result. The PACTE law should have a qualitative impact too, in that one of the objectives of this law is to get more people to use French patents. We should see the number of patent requests coming from SMEs and start-ups increase significantly in the aftermath of the PACTE law.