A few days ago, I had the privilege to speak at a joint INPI-EPO conference in the premises of the INPI in Courbevoie. My assigned topic was post-grant proceedings from a patent attorney’s point of view, and I had a few slides on sort of unresolved questions regarding French limitation proceedings. And just a couple of hours before my presentation, I learned that the INPI had just issued its long-awaited guidelines on limitation proceedings the night before.
I frantically skimmed the fresh guidelines and as luck would have it, some of the points in my presentation were now obsolete.
But that’s all right, I am glad that we now have more guidance from the patent office regarding their practice with respect to requests for limitation.
The updated and relevant part of the guidelines can be downloaded here.
Here are a few comments from me, after a second and less frantic reading.
The first sentence of the new limitation section is actually a bit surprising. It reads:
The patent proprietor may, at any time, the 5-year statute of limitations deadline being complied with, either renounce its patent entirely (total renunciation) or renounce one or several claims (partial renunciation) or limit the scope of the patent by modifying one or more claims (limitation).
The surprising part is the reference to the 5-year statute of limitations deadline. Art. 2224 of the Code civil is cited on the side, next to this paragraph. This is the general statutory provision according to which personal actions or actions relating to a movable property are time-barred 5 years from the day the right owner knew or should have known the facts making it possible for him/her to exert the action.
I must confess that it is the first time that I have seen any indication that this 5-year time bar, which we have discussed at length in the context of nullity suits, could be of any relevance whatsoever when it comes to the right of a patent owner to limit their patent in front of the INPI.
Besides, the French version of this paragraph of the guidelines is actually ambiguous and could be interpreted as meaning that the deadline needs to be complied with, or that it is always complied with.
I discussed this sentence with a couple of INPI people at the conference. After this discussion, I must say I still do not really understand the sentence, but I was told that it is not the INPI’s intention to refuse any request for limitation as being time-barred.
And now, some other notable points, in no particular order:
- If the request for limitation is deemed inadmissible, a communication is issued, with a 2-month deadline to complete or correct the request.
- The request for limitation must be filed by or on behalf of the patent proprietor that appears on the national patent register. Otherwise, the request is inadmissible. This means that, in case of a change of ownership, this change must be officially recorded before a request for limitation can be validly filed.
- Auxiliary requests are not accepted and, if filed, would make the request for limitation inadmissible.
- If the patent to be limited is a European patent, the request for limitation and exhibits must be filed in French. But, since the authentic text of the patent is the text in the language of the proceedings (before the EPO), the INPI must examine the limitation based on the text in this language. No translation of the patent into French is required. On the other hand, only the limited claims in the French language will appear on the national patent register.
- If the request for limitation is admissible but objections on the merits are raised (due for instance to a lack of clarity, or to the absence of an actual limitation), a communication is issued, with a 2-month deadline to correct any deficiency. This deadline can be extended by 2 additional months upon request. Again, it is not allowable to offer several modification proposals.
- Third party observations are not admissible.
- The INPI will react to the initial request for limitation or to any further submission by the requester within 1 year, in view of the principle according to which “silence implies refusal” after a 1-year period.
One takeaway message from the above is that the updated guidelines now officially confirm that auxiliary requests are not admissible at the INPI. And I assume that this is a general rule.
I wonder whether this will still be the case in the national opposition proceedings which may be set up in the near future. I am sure that all European patent attorneys will agree that the right to file auxiliary requests is absolutely fundamental in the patent proprietor’s defense in an opposition at the EPO.
And now, the most important information in the guidelines, in my opinion: what is or is not considered as an actual limitation.
First, it is possible to limit a dependent claim without amending the independent claims on which it depends. This is consistent with practice at the EPO.
Second, a mere clarification of a claim is not allowed. The modification has to actually restrict the claim.
Third, changing a claim category is generally not considered as a limitation.
Fourth, the addition of claims, either broader or narrower than the existing ones, is prohibited.
This fourth point is extremely important, because this has not always been the case. In one lawsuit that I worked on, the patentee had taken advantage of limitation proceedings to double the number of dependent claims without even restricting the main independent claim. Based on informal conversations at the conference, I understand that this would no longer be possible today. The INPI was probably influenced by a ruling from the Paris TGI discussed on this very blog (confirmed on appeal).
Last but not least, what the Guidelines are silent on.
To me, the elephant in the room is the extremely tricky question of what happens if a European patent is limited in France and then the patent is modified at the EPO in a different manner (in opposition or central limitation proceedings). I am not sure anyone has a clue what would happen in such a case.
I understand that the INPI is currently looking at possible options regarding the interplay between French limitation and the future French opposition. Could it be an opportunity to also revisit the interplay between French limitation and European opposition/limitation?
I will conclude this post with some numbers.
With the help of my colleague Patrick Marollé (thank you), I have looked at the duration of limitation proceedings in France. Based on a sample of 25 cases, we have found an average duration of 11 weeks, from the request for limitation to the official issuance of the limitation.
A couple of years ago, I had conducted a similar analysis with respect to central limitation at the EPO, and had found an average duration of … 11 months.
So, the winner is… the INPI. This is certainly due in part to a more straightforward procedure (no need for an invitation to file claim translations and pay a final fee for instance). But I am sure part of the explanation is also that INPI examiners handle requests for limitation with a high priority. As a reminder, in one of the recent cases reported on this blog, the limitation was formally issued only 8 days after the request was filed. That record will not be easy to break.