Recognition of Patent Rights issued by INPI in French Polynesia

Since February 2004 and the organic law relating to the autonomous status of French Polynesia, many areas of responsibility have been transferred to the authorities of this henceforth "Pays d'Outre Mer", including those relating to the protection of Industrial Property rights.

Local authorities however have not actually implemented these arrangements in some areas because financial compensation has not been forthcoming. The situation changed in September 2013 when the Beach Soccer World Cup was held in Papeete. Indeed, the bodies who worked with FIFA are under an obligation to ensure that there is local protection for that organisation's Industrial Property rights.

Through the implementation, therefore, of an instrument of recognition of rights issued by the French TMO (INPI) before 1 September 2013, ambiguities relating to the protection of Industrial Property rights issued by INPI in French Polynesia were resolved (This relates to PATENTS, CERTIFICATES OF UTILITY, BRANDS, DESIGN PATENTS, TOPOGRAPHY OF SEMI-CONDUCTOR PRODUCTS).

The system of recognition varies depending on the date of application for the rights in question.

In outline:

► Rights registered with INPI before 3 March 2004 and which are still in force, have effects which are automatically and retroactively recognised in French Polynesia. No formalities are required.

► Any application submitted to INPI between 3 March 2004 and 31 August 2013 must be the subject of a recognition request made to local authorities in order to ensure that its effects are fully and retrospectively recognised in French Polynesia. This pro-active and optional procedure may be carried out by rights holders between now and 1 September 2015, as long as the rights concerned are in force at the time the request is made. Various fees must be paid depending on the patent rights that are involved.

► To date, the authorities have made no plans to deal with Industrial Property rights registered with INPI between 1 September 2013 and 31 December 2013.

► Discussion between the authorities in mainland France and the Polynesian authorities are under way, to arrange the fate of applications and renewals made with INPI from 2014 on. These discussions should give rise to an agreement which allows Industrial Property rights to be extended (or not) to French Polynesia. We will provide details of the content as soon as it has become effective.

In the light of the above, we can only encourage those holding Industrial Property Property rights registered with INPI between 3 March 2004 and 31 August 2013 to request that the effects of these be recognised in French Polynesia. Please contact Brevalex for assistance with these processes and for any additional information that you may need relating to this reform.

Christophe Saliou
Conseil en Propriété Industrielle
Conseil Européen en Marques et Modèles
French and European Trademark and Design Attorney