A guide to intellectual property law in France. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the patents, trade marks and designs Country Q&A tool.
This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
An invention must (Article L. 611-10, French Intellectual Property Code (IPC)):
Be new.
Involve an inventive step.
Be capable of industrial application.
Not be excluded from patentable subject matter.
The following categories are excluded from patent protection (Articles L. 611-10 and L. 611-16 et seq., IPC):
Discoveries, scientific theories and mathematical methods.
Aesthetic creations.
Schemes, rules and methods for performing a mental act, playing a game or conducting business, and computer programs.
Presentations of information.
Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.
Inventions whose commercial exploitation would be inconsistent to public policy or morality.
Human body at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, including:
processes for cloning of human beings;
processes for modifying the germ line genetic identity of human beings;
use of human embryos for industrial or commercial purposes;
total or partial sequences of a gene as such.
Animal varieties.
Plant varieties.
Essentially biological processes for the production of plants and animals.
Processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal, and also animals resulting from these processes.
Application for patent registration must be filed with the National Industrial Property Office (INPI). For more information see box, The regulatory authority.The procedure for patent application is governed by Articles L. 612-1 et seq. and R. 612-1 et seq. of the IPC. Guidance can be found on the INPI website, including information on the application procedure (www.inpi.fr).
French patent law does not provide a specific patent opposition procedure. However, third parties can submit observations within three months from the date of publication of the preliminary search report relating to a patent application (Article R. 612-63, IPC). In addition, an ownership claim can be made on the grounds of a patent application filed fraudulently (Article L. 611-8, IPC).
Patents are granted for a period of 20 years, from the day the application is filed (Article L. 611-2, IPC). Patents cannot be renewed or extended, except for pharmaceutical patents, the protection of which can be extended for a specific additional period of time.
The following acts, when occurring on French territory, constitute patent infringements (Articles L. 613-3 and L. 613-4):
Making, offering, putting on the market or using a product which is the subject matter of the patent, or importing or stocking a product for such purposes.
Using a process which is the subject matter of the patent or, when the third party knows, or it is obvious in the circumstances that the use of the process is prohibited without the consent of the owner of the patent, offering the process for use.
Offering, putting on the market or using the product obtained directly by a process which is the subject matter of the patent or importing or stocking for such purposes.
Supplying or offering to supply to a person other than a person entitled to work the patented invention, the means of implementing the invention with respect to an essential element thereof where the third party knows, or it is obvious from the circumstances, that such means are suited and intended for putting the invention into effect.
The Paris Court of First Instance has exclusive jurisdiction over patent infringement actions and related unfair competition matters (Article L. 615-17 et seq., IPC).
The defences to patent infringement actions include:
Procedural defences (for example, lack of the claimant's legal interest, nullity of the writ of summons).
Invalidity of the patent.
That the acts are authorised, such as for:
private non-commercial use;
experimental use;
improvised preparation for individual use in a pharmacy; or
personal prior use.
Good faith (this applies to cases where the claimant has the evidence of the performance of the acts in full knowledge of their infringing character).
Proof of lawful customs transit.
Exhaustion of rights.
In all cases, the court can order:
Monetary damages and fines.
Withdrawal, confiscation or destruction of the infringing goods and prohibition of further sales.
Publication of the judgment.
In case of criminal proceedings, the court can order:
Against individuals:
imprisonment;
deprivation, for a maximum of five years, of the right to elect and be elected to commercial courts, chambers of commerce and industry and professional chambers and to joint conciliation boards.
Against legal entities:
permanent closure;
closure for up to five years.
To be registered as a trade mark, a sign must be:
Capable of graphical representation.
Distinctive.
Not deceptive.
Lawful.
Available.
The INPI only proceeds to a limited verification of said requirements.
Registration of trade marks is necessary (Article L. 712-1, IPC). Only well-known trade marks can be granted protection without registration under Article 6bis of the WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention).
The INPI is responsible for trade marks registration. Article R. 712-1 et seq. of the IPC sets out the application procedure. Information relating to trade mark application procedures can be found on the INPI website (www.inpi.fr).
A trade make can be refused registration (totally or partially) (Article L. 712-7, IPC):
In case of failure to meet the formal filing requirements.
If the sign is not capable of graphical representation, not distinctive and/or unlawful.
In the event of successful opposition proceedings.
Third parties can file opposition proceedings, within two months from the date of publication of the trade mark application, on the following grounds (Article L. 712-4, IPC):
Ownership of a prior trade mark.
Ownership of a prior trade mark application.
Ownership of a prior well-known mark.
Exclusive right of exploitation.
In addition, third parties can submit observations within two months from the date of publication of the trade mark application (Article L. 712-3, IPC).
Trade mark protection starts from the date of filing of the trade mark application and lasts for ten years, renewable indefinitely.
The following acts, when occurring on French territory, constitute trade mark infringements (Articles L. 713-2, L. 713-3 and L. 716-9 et seq., IPC):
The reproduction, use or affixing of a trade mark for goods or services that are identical to those designated in the registration.
The suppression or modification of a duly affixed trade mark.
If there is a likelihood of confusion in the public's mind:
the reproduction, use or affixing of a trade mark or use of a reproduced trade mark for goods or services that are similar to those designated in the registration;
the imitation of a trade mark and the use of an imitated trade mark for goods or services that are identical or similar to those designated in the registration.
Importing, exporting, transferring, re-exporting, making, selling or stocking infringing goods.
Ten courts of first instance have exclusive jurisdiction over trade mark infringement actions and related unfair competition matters (Articles L. 713-3, IPC and D-211-6-1, Judicial Organisation Code).
A defendant may oppose various defences in case of trade mark infringement proceedings, including:
Procedural defences (for example, lack of the claimant's legal interest, nullity of the writ of summons).
Invalidity of the trade mark (for example, lack of distinctive character, unlawfulness).
Revocation for non-use of the relevant trade mark.
Use of the trade mark as a necessary reference to identify the destination of a product or service.
Existence of a prior right over the sign (family name, business name, company name).
Absence of use of the disputed sign in the course of trade.
Absence of use of the disputed sign as a trade mark.
Absence of likelihood of confusion.
Acquiescence of the use of the disputed sign.
Exhaustion of rights.
The remedies are the same as for patent infringement (see Question 9).
To qualify for copyright protection, a work must be original (that is, bear the personal print of its author).
Copyright arises automatically by the mere act of creation. To qualify for protection, no registration is required.
As a general principle, copyright protection starts from the date of creation of the work and lasts 70 years, as from:
The author's death (post mortem auctoris).
The death of the last surviving co-author with respect to works of collaboration.
The date of publication of the work with regards to pseudonymous, anonymous or collective works.
For posthumous works disclosed after the expiry of the 70 years, a copyright protection lasts 25 years from the year following the date of publication.
The following acts, among others, constitute copyright infringements, when occurring on the French territory (Articles L. 122-4 and L. 335-2 et seq., IPC):
Complete or partial performance or reproduction.
Sale, exportation and importation of infringing works.
Fixation, reproduction, communication or making available to the public, on payment or free of charge, or any TV diffusion of a performance, a phonogram, a videogram or a programme.
Failure to pay the remuneration due to the author, the performer or the phonogram or videogram producer.
This is the same as for trade marks (see Question 17).
The defences to copyright infringement actions include:
Procedural defences.
Absence of copyright protection of the relevant work (lack of originality, expiration of the term of protection).
Exhaustion of rights.
Applicability of a copyright exception, such as:
private performance or cop;
quotation or analysis;
press review;
public speech;
parody.
Applicability of the exceptions is subject to specific requirements set out by Article L. 122-5 of the IPC.
This is the same as for patents and trade marks (see Question 9).
To be registered, a French design must:
Be novel.
Have an individual character.
Not have an appearance whose features are solely dictated by the technical function of the product.
Not have an appearance whose exact form and dimension must necessarily be reproduced to allow it to be mechanically associated with another product in a manner allowing both of these products to perform their function.
Be lawful.
The French INPI only proceeds to a limited verification of these requirements.
The INPI is the office in charge of design registration. Articles L.512-1 et seq. and R.511-1 et seq. of the IPC set out the application procedure. Information relating to the application procedure can be found on the INPI website (www.inpi.fr).
Third parties cannot oppose the registration of a design.
Protection starts from the date of the filing of the design application and lasts for a period of five years, renewable up to four times.
The following acts, when occurring on French territory, constitute design right infringements (Article L. 513-4, IPC):
Making, offering, putting on the market, of a product including a registered design.
Importing, exporting, using or possession for these purposes, of a product including a registered design.
This is the same as for trade marks (see Question 17).
The defences to registered design infringement actions are:
Procedural defences.
Invalidity of the design (for example, lack of novelty or individual character).
The disputed product makes on the informed observer a different overall visual impression.
Exhaustion of rights.
A design right exception applies, such as:
private and non-commercial use;
experimental use;
citations or teaching.
Applicability of these exceptions is subject to specific requirement set out under Article L. 513-6 et seq. of the IPC.
This is the same as for patents (see Question 9).
Unregistered design may qualify for copyright protection (see Questions 20 to 26).
In addition, unregistered Community design rights enjoy protection on French territory, provided they:
Are new.
Have an individual character.
Are made available to the public within the Community.
Community unregistered design protection starts from the date on which the design was first made available to the public within the Community and lasts for a term of three years.
French law does not protect confidential information, as such, by a specific set of rules. However, an employee or a director of a company can be held criminally liable for disclosing the manufacturing secrets of the company they work for (Article L. 152-7, French Labour Code).
The French Parliament is currently discussing a bill aimed at strengthening the protection granted to trade secrets.
Grounds include:
An act of unfair competition.
Fault.
A contractual breach of a non-disclosure agreement, or a confidentiality clause.
Disclosure (or attempted disclosure) of manufacturing secrets by a director or employee.
Depending on the factual circumstances, actions can be brought either before civil courts of first instance, commercial courts or criminal courts.
The main defence is that the information disclosed was already in the public domain.
The remedies include:
Damages (civil).
Fines (criminal).
Imprisonment for up to two years.
Prohibition of civic, civil and family rights for up to five years.
For further information see chapter, IP in Business Transactions: France.
Main areas of responsibility. The INPI's main areas of responsibility are:
Providing information about IPRs.
Examination, publication and registration of IP titles.
Handling opposition proceedings and examining third parties' observations.
Carrying out and publishing reports relating to IP rights.
Guidance on application procedure. Guidance in relation to the application procedure is available on the INPI website.
*The authors express their special thanks to Clémence Lapôtre for her valuable input into the writing of this article.
T +33 1 56 59 39 39
F +33 1 56 59 39 38
E ebaud@jonesday.com
W www.jonesday.com
Qualified. Paris, 1992
Areas of practice. IP (contentious and non-contentious), advertising, licensing and technology transactions.
Recent transactions
T +33 1 56 59 39 39
F +33 1 56 59 39 38
E efortunet@jonesday.com
W www.jonesday.com
Qualified. Paris, 2010
Areas of practice. All aspects of IP law (contentious and non-contentious).
Recent transactions
