FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
the MA (Article L.611-2, IPC), provided that the total protection period, patent included, cannot exceed 20 years. SPC Waivers Regulation (EU) 2019/933 on SPCs has created waivers to the protection conferred by an SPC to ensure competitiveness. Importantly, the manu- facture of a product or a medicinal product con- taining the concerned product, for the purposes of exporting to third countries, or any related act strictly necessary for the manufacture or export of such a product, is now permitted. Furthermore, MA holders can now conduct all preparatory acts for the marketing of the generic in an EU member state six months before the expiry of the SPC. 1.7 Third-Party Rights to Participate in Grant Proceedings In France, any third party may, up to three months after the publication of the search report, submit written observations to the INPI related to the novelty or inventive step of an invention (Articles L.612-13 and Article R.612-63, IPC). As for utility certificates, third parties can submit observations until their grant (Article R.616-1, IPC). Applicants can reply to the observations within a one-time renewable period of three months (Article R.612-64, IPC). Before the EPO, after the publication of a Euro- pean patent application, and as long as its examination is ongoing, third parties may file observations concerning the patentability of the invention. 1.8 Remedies Against Refusal to Grant an Intellectual Property Right The refusal of the INPI to grant a patent or util- ity certificate is notified to the applicant. An
applicant can file before the INPI a request for a review of the decision ( recours gracieux ). Such a request is admissible only if the decision is deemed to be unlawful, no ground of expediency is accepted. Thereafter, the INPI can withdraw its decision within four months. An applicant can also appeal the INPI’s deci- sions before the Paris Court of Appeal within one month (extended by one month for residents of French overseas territories and two months for foreigners) from the notification of the deci- sion. The decision handed down by the Court of Appeal may be appealed before the Supreme Court ( Cour de cassation ), either by the applicant or the INPI. Where a European patent is refused, the appli- cant can appeal to the EPO’s Boards of Appeal within two months of the notification of the deci- sion. The applicant may further lodge an appeal before the Enlarged Board of Appeal. 1.9 Consequences of Failure to Pay Annual Fees Failure to pay annual fees of a French, European or unitary patent by the due date can lead to the lapse of the exclusive rights. The payment is due on the last day of the month of the anniversary of the filing date of the application. Failure to do so can be remedied, within a grace period of six months, subject to the payment of the fees plus a penalty amounting to 50% of the belated fees. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights French law allows patentees to request before the INPI, in writing, the abandonment or amend- ment (ex parte) of one or several patent claims (as well as the description and the drawings) to reduce the scope of protection of the invention (Articles R.613-45 and L.613-24, IPC). In cases
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