FRANCE / PATENTS / RECENT DEVELOPMENTS

IIC (International Review of Industrial Property and Copyright Law, Vol 31 No 5

Development of French Patent Law in 1997 and 1998

Professor Joanna Schmidt-Szalewski

Most of this article is concerned with the case law in France, since legislative changes were relatively few and mainly limited to the adaptation of the French Intellectual Property Code to various requirements of the TRIPS Agreement. Several of the amendments were concerned with compulsory licences: for example, as the result of one of the amendments, the import of patented goods manufactured in a member state of the WTO is regarded as working the patent; and licences granted for lack of working the patent can be granted on an exclusive or a non-exclusive basis (previously, only non-exclusive licences could be granted). In the field of substantive patent law, the author draws attention to cases clarifying the concepts of industrial application (which must be specified in the patent application); of novelty, with particular reference to the loss of novelty resulting from disclosure by the patent holder; and of the inventive step, whose criteria have been defined in detail by the French courts. On employees’ rights, the rule in the French code that inventions made by an employee, when carrying out a permanent or occasional commission to invent, belong to the employer, has been refined in a case in which the court held that an occasional commission to invent could be found "in a broadly worded instruction to several persons without specifying a precise research subject"; and in a further case holding that a former employee may be required in certain circumstances to assign the patent to his employer, but is then entitled to reasonable remuneration. The author describes an interesting case in the field of genetic engineering drawing a distinction between the requirement that there must be a clear and complete description of the invention and the unjustifiable implication that all types of embodiment must be described exhaustively: the degree of detail must be considered on a case-by-case basis, with special regard to the state of the art in the field in question, new technology calling for more generalised description than refinements of existing technology. The article concludes with a note on procedural developments. Once again, compulsory licences figure: although licences for failure to exploit are seldom granted, a recent case allowed an infringing party a licence for a technical element not exploited by the patent holder. [20025]