This provision will come into force one year after the promulgation of the PACTE Act, i.e. May 22, 2020, and will be applicable to domestic French patent applications filed as of this date. Previously, only clear lack of novelty allowed INPI examiners to reject a domestic French patent application. Inventive step was therefore checked only post-grant by judicial courts. This weakened the value and the quality of French patents and created a great deal of litigation.
France now comes in line with the many countries, where inventive step/non-obviousness of the subject-matter of patent applications is examined (e.g. Germany, United States, Japan, South Korea or China). As a consequence, it should be easier for French applicants to extend the validity of a French patent to other countries or regions.
From a practical standpoint at the office, a search report on the French patent applications was already subcontracted by INPI to the European Patent Office which formally took position on the identified prior art including a written opinion on inventive step. Therefore, INPI already has the data needed to decide on this requirement. As to headcount, INPI already anticipated the need to examine inventive step and should not need to recruit more examiners.
Authored by Stanislas Roux-Vaillard and Fanny Cony