French Order No. 2018-341 of 9 May 2018 relating to the European Patent with unitary effect and the Unified Patent Court ("UPC") was published in the Official Journal on 10 May 2018.

This long-awaited text has a twofold objective: to ensure the compatibility of legislation, in particular the French Intellectual Property Code, with the two European Union regulations forming the "patent package" (Regulations (EU) No. 1257/2012 and No. 1260/2012) and to implement the agreement on a unified patent court, signed in Brussels on 19 February 2013 and ratified by France by Law No. 2014-199 of 24 February 2014 ("the Agreement").

Among the substantial amendments made by this text are those relating to the statute of limitations on actions relating to a European or French patent: the limitation period for bringing invalidity actions on the one hand, and the limitation period for bringing infringement actions on the other. They ensure equal treatment before the Paris District Court and the UPC and provide greater legal certainty.

Patent invalidity actions are not statute-barred

Article 13 of the Order, which appears in its Title II "Provisions relating to legal proceedings relating to European patents and French patents", introduces a new Article L. 615-8-1 in the French Intellectual Property Code according to which : "A patent invalidity action is not statute-barred."

The purpose of this provision is to put an end to the application by the French Courts of the general five-year statute of limitations provided for in Article 2224 of the French Civil Code (resulting from Law No. 2008-561 of 17 June 2008 reforming civil limitation rules generally) and the delicate determination of the starting point for this 5-year period as regards patents. In recent years, this issue has been the subject of much legal debate.

This text is to be welcomed. It avoids a distortion between the French regime and that of the UPC as well as between the French regime and that of our European neighbors which have no statute of limitations applicable to patent invalidity actions.

Some nuances must however be identified:

• First, the entry into force of the provisions of the Order is subject to the entry into force of the Agreement (Article 23 I of the Order), which is itself dependent upon its ratification by Germany, which ultimately depends on the outcome of a constitutional complaint there;
   
• Secondly, according to Article 23 II of the Order, "the provision provided for in Article 13 [the new Article L. 615-8-1] has no effect on a limitation period that has already passed. It applies to actions for which, on the date of its entry into force, the limitation period has not yet expired". When it  enters into force, the debate will therefore remain open as to whether the limitation period has already expired or not.
   
• Lastly, this text, which only deals with patents, leaves open the question of the statute of limitations which are applicable to invalidity actions of other industrial property rights, and, in particular, trade marks.

Modification of the starting point of the limitation period for patent infringement actions

The time limit for instituting patent infringement proceedings remains five years. However, Article 12 of the Order modifies the starting point of this time limit. Article L. 615-8 of the French Intellectual Property Code, as superseded, provides that infringement actions shall be statute barred after five years running, no longer "from the facts giving rise to the cause of action" (i.e. the date of the acts of infringement), but, "from the date on which the holder of a right knew or should have known the last fact allowing him to bring action".

This amendment, which echoes Article 72 of the Agreement and Article 2224 of the Civil Code, is undeniably more favorable to right holders.

Its entry into force remains, however, also subject to the entry into force of the Agreement and the determination of the "date on which the holder [of the patent] knew or should have known the last fact allowing him to bring action" risks giving rise to some interesting debates.

One may also regret that such harmonisation did not extend to other intellectual property rights, but in ruling by Order, the Government could only act in the strict context of an enabling law which did not relate to these other rights (law no. 2016-1547 of November 18, 2016 of modernisation of justice of the XXIth century, Article 109 I 3° and 4°). It is therefore possible that the French legislator will again intervene on this point, perhaps on the occasion of the transposition into French law of the "trade mark reform package".

Finally, this Order must be accompanied by a decree which will determine conditions of its implementation.

Click here to read the French Order No. 2018-341 of 9 May 2018.

By counsel Julie Pailhès

This Client Alert is not intended to constitute legal advice and should not be taken as a recommendation to take action or withhold from taking action.