Divide and not conquer

Many decisions that I have commented on relate to complex cases, involving multiple patents, or various actions in front of different courts, or endless back and forth bouncing between the Cour de cassation and the Cour d’appel.

So I am grateful, that, just this once, the mailman has delivered a short decision on a relatively simple legal point.

On March 21, 2008, Kubota Corporation filed a French patent application on a lawn mower, published as FR2915847.

On April 22, 2015, they filed a first divisional patent application, published as FR3019966.

On March 1, 2018, they filed a second divisional patent application. However, on August 27, 2018, the INPI (French patent office) refused this second divisional application as inadmissible.

The reason for the refusal was that the second divisional application was filed after the fee for grant for the grandparent application (FR’847) had been paid, back in April 2015.

Indeed, the INPI Guidelines for examination recite the following (section B.III.2):

A division can only be requested until the date of payment of the fee for grant and printing for the initial application. When this fee has already been paid or when the grant procedure has ended because of a refusal, withdrawal or lapse of the initial application, the division is refused. […]

When the division relates to a divisional application (B) stemming from an initial application (A), this control concerns application (A), and not divisional application (B)

French practice therefore differs from EPO practice.

At the EPO, you may file a second generation divisional application as long as the first generation divisional application is still pending, even if the grandparent application has already proceeded to grant. This is not possible according to the INPI guidelines.

Kubota filed an appeal against the refusal with the Paris Cour d’appel. They challenged the INPI’s interpretation of the statute.

The provision at stake is article R. 612-34 of the Code de la propriété intellectuelle:

Until the payment of the fee for grant and printing of the patent, the applicant may, on its own initiative, file divisional applications of its initial patent application. 

The key issue is how to understand to which application the time limit refers. The INPI’s position is that it is the original application in the family; whereas the appellant’s position is that it is rather the application from which a division is filed.

In this case, the fee for grant and printing for the first divisional application (FR’966) was paid on March 7, 2018, i.e. after the filing of the second divisional application at stake here – so that the filing would be admissible under the appellant’s interpretation of R. 612-34.

The court sided with the INPI on this interpretation issue.

First, they made reference to article L. 612-4:

The patent application can only relate to one invention or a plurality of inventions which are related so as to form a single general inventive concept. 

Any application not meeting the requirements of the previous paragraph must be divided within the statutory deadline; divisional applications benefit from the filing date and optionally priority date of the initial application

Thus, the court concluded that the “initial application” is the first one in the family – the one that defines the filing and priority dates for the entire family.

Second, the court stated that, in article R. 612-34, the term “patent” (cf. “until the payment of the fee for grant and printing of the patent”) refers to the same IP right as the “initial patent application” (cf. “may […] file divisional applications of its initial patent application“).

Ergo, the time limit condition applies to the payment of the fee for grant and printing in connection with the original application in the family.

In its submissions, Kubota made reference to articles L. 612-12-3 and L. 613-25 which prohibit extension of subject-matter in a divisional application, beyond the content of the “initial application as filed“. But the court was not convinced, noting that, precisely, this prohibition applies to a comparison with the original application in the family.

The court also remained insensitive to a comparison with other patent offices having a different practice: “the harmonization objective relates to the principle of the ability to divide a patent application, not the modalities of this division”.

All in all, the court’s position does not appear unreasonable. But is it compelling?

This lawn mower looks skeptical about the appeal decision.

Let’s take a step back. Article R. 612-34 does not strike me as being crystal clear. I suspect that this may be because its drafters did not have in mind the case of cascading divisional applications, i.e. divisional applications of divisional applications.

Furthermore, both main points of the court’s reasoning could potentially be challenged.

Starting with the second point in the court’s reasoning, how can we be certain that the term “patent” and the term “initial patent application” in R. 612-34 relate to one and the same thing? After all, they are not the same terms.

And then, going back to the first point, the court referred to L. 612-4 and concluded that the term “initial patent application” refers to the original application in the family.

But: 1, even if this is the case, the term “initial patent application” may or may not have been used perfectly consistently in the Code de la propriété intellectuelle; where is the evidence that it has exactly the same meaning in R. 612-34? And 2, “initial patent application” in L. 612-4 could also be interpreted as relating to the (immediate) parent application based on which the division is performed. It is true, that ultimately, the same filing date / priority date applies to the entire family, but in the case of cascading applications, it could simply be because the filing date of the “initial” application (meaning the parent application) is itself defined by reference to the filing date of its own “initial” application (meaning the grandparent application). A transitive definition, if you will.

Again, article R. 612-34 recites that “the applicant may, on its own initiative, file divisional applications of its initial patent application“. On the face of it, isn’t the “initial patent application” in this provision the one based on which the division is made, i.e. the immediate parent?

If so, we would come to the conclusion that:

  • Either it is only possible to file a divisional application based on the original application, i.e. cascading or second generation divisional applications are not allowed.
  • Or else, cascading applications are allowed, and the time limit in R. 612-34 applies to the previous application in the cascade, not to the source of the cascade.

In turn, if the above reasoning is correct, then this means that the INPI’s position that has just been validated by the court (cascading divisional applications are OK but the time limit applies to the original application) is contradictory.

In fact, on a practical standpoint, what is the point in allowing cascading divisional applications if you can only file a divisional application when the original application in the family is still pending? This is rather useless, and you may as well decide that only divisional applications stemming from the original application are possible.

As a final and important remark, the court acknowledged in passing that the INPI’s practice prior to 2011 was different, but added that this does not matter.

Well, does it not? I am quite curious about this. Do readers have any information to share about this change of practice and what caused it? Article R. 612-34 has been here and has not been modified since 1995.

Now that it is time to finish this post, I am left with the impression that even simple legal points are not necessarily straightforward.

Let’s see if there is a cassation appeal, and if so, what the court will make of this.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, November 22, 2019, Kubota Corporation v. Directeur Genéral de l’INPI, RG No. 18/27433.

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