The Agreement on a Unified Patent Court (UPC Agreement) entered into force on June 1, 2023. This agreement established the European patent with unitary effect and the Unified Patent Court (UPC).1
In addition to changes affecting European patent law (request for unitary effect, the possibility to opt out of the UPC’s exclusive jurisdiction during a seven-year transitional period, renewable, etc.), the entry into force of the UPC Agreement also brought changes to French patent law.
Indeed, Ordinance No. 2018-341 of May 9, 2018 on the European patent with unitary effect and the Unified Patent Court amended Articles L614-13 and L614-14 of the French Intellectual Property Code (IPC) and created a new Article L614-16-3 IPC concerning the cumulative protection of a French patent and a European patent.
Before the entry into force of the UPC Agreement, Article L614-13 IPC provided that:
“Where a French patent covers an invention for which a European patent has been granted to the same inventor or successor in title with the same filing or priority date, the French patent shall cease to have effect either on the date on which the period for filing opposition to the European patent expires without an opposition having been filed, or on the date on which the opposition proceedings are concluded, the European patent having been maintained.”
In other words, cumulative protection between a French patent and a European patent was not possible. The French patent ceased to have effect once the opposition period for the European patent expired (or once opposition proceedings were closed) for the overlapping scope of both patents relating to the same invention.
Since the entry into force of the UPC Agreement, Article L614-13 IPC now provides that (amendments highlighted):
“I. Where a French patent covers an invention for which a European patent has been granted to the same inventor or successor in title with the same filing or priority date, and where the European patent has been opted out of the exclusive competence of the Unified Patent Court, under Article 83(3) of the Agreement on a Unified Patent Court, the French patent shall cease to have effect:
- 1° Either on the date on which the period for filing opposition to the European patent expires without an opposition having been filed;
- 2° Or on the date on which the opposition proceedings are concluded, the European patent having been maintained;
- 3° Or on the date on which the opt-out is recorded in the register under Article 83(3) of the Agreement, where that date is later than those mentioned in 1° and 2°
However, where the French patent is granted after one of the dates mentioned in 1° to 3°, that patent shall have no effect. (…)”
II. Where the European patent has not been opted out of the exclusive competence of the Unified Patent Court, under Article 83(3) of the Agreement, the French patent shall continue to have effect.”
The newly created Article L614-16-3 IPC provides:
“A French patent may cover an invention for which a European patent with unitary effect has been granted to the same inventor or successor in title with the same filing or priority date.”
These provisions allow for possible cumulative protection between a French patent and a European patent in France, provided that the European patent falls (or may fall) under the UPC’s jurisdiction, meaning:
- either a European patent with unitary effect (exclusively under UPC jurisdiction),
- or a European patent without an opt-out.
This cumulative protection is “possible” because it requires the patentee to maintain both the French patent and the French part of the European patent in force by paying the annual renewal fees for each.
In summary
- Cumulative protection between a French patent and a European patent without an opt-out is possible.
- Cumulative protection between a French patent and a European patent with unitary effect is possible.
- Cumulative protection between a French patent and a European patent that has been opted out is not possible.
In the last case, the date on which the French patent ceases to have effect depends on the date the opt-out was filed:
- If the opt-out request is filed before the expiry of the opposition period (or before the close of opposition proceedings), the French patent ceases to have effect on that same date.
- If the opt-out request is filed after that date, the French patent ceases to have effect on the date of the opt-out request.
These changes significantly alter long-established practice.
- By default, in the absence of action by the patent owner, the French patent and the European patent now coexist, with cumulative protection, while substitution of the European patent for the French patent becomes the exception.
- In the long term, cumulative protection between a French patent and a European patent will become systematically possible. The opt-out mechanism is temporary, limited to a seven-year transitional period (renewable once) that began on June 1, 2023.
One disadvantage often associated with UPC litigation is that a European patent may be revoked centrally in all UPC member states. For patent owners who also hold a corresponding French patent, this risk is mitigated by the survival of the French patent in the event the European patent is revoked by the UPC.
This is precisely the objective stated in the Report to the President of the Republic on Ordinance No. 2018-341 of May 9, 2018, which emphasized strengthening the legal certainty of patentees when infringement occurs solely in France, avoiding the situation where the patentee would otherwise have to bring an infringement action before the UPC with the risk of pan-European revocation.
Although the validity of the French patent surviving after revocation of the corresponding European patent could still be challenged, this would require a separate action before the French courts. If necessary, limitation proceedings under Article L613-24 IPC could also be considered to restrict the scope of the French patent and reduce the likelihood of invalidity.
Finally, the new version of Article L614-13 IPC clarifies that withdrawal of an opt-out under Article 83(4) of the UPC Agreement does not restore the effects of the French patent once they have ceased.
Thus, the decision to file an opt-out for a European patent is not without consequences for the corresponding French patent. It would therefore be ill-advised to systematically opt out all European patents in the mistaken belief that such a decision would be fully reversible through withdrawal of the opt-out.
Conclusion
The decision to request an opt-out for a European patent is not without impact on the corresponding French patent, whose scope overlaps in whole or in part with that of the European patent.
It does not seem advisable to request an opt-out indiscriminately for all European patents — particularly those for which the corresponding French patent has not yet ceased to have effect — under the false assumption that this decision is fully reversible.
October 2023
Contributing authors
Ghislain Laurin
Partner | European Patent Attorney
Sabrina Pavageau
Partner | European Patent Attorney