Patent still standing

The appraisal of standing in patent nullity suits in France is complex and harsh. The topic has been addressed in a number posts, for instance this one, that one or that other one.

The ruling commented upon today revisits the issue, in a quite unusual way.

Today’s case relates to the LEVOTHYROX® controversy.

LEVOTHYROX® is a drug containing a manufactured form of the thyroid hormone thyroxine (T4). It is used to treat thyroid hormone deficiency. The drug is marketed in France by Merck Biopharma.

According to a press release, the French health authorities (ANSM) requested a modification of the formulation so as to better stabilize the active upon storage. In March 2017, Merck Biopharma thus switched to a new formulation containing different excipients. A few months later, a number of patients complained about side effects seemingly caused by the new formulation. A couple hundred thousand people signed a petition demanding that the old formulation be put back on the market.

The existence and the origin of the side effects were hotly debated and I am not aware that any consensus has been reached yet as to what may have gone wrong.

Anyway, it turns out that there is also an IP aspect to this matter. Indeed, European patent EP 2885005 B1, owned by Merck Patent GmbH, protects the new LEVOTHYROX® formulation. Claim 1 is directed to a solid pharmaceutical preparation comprising levothyroxine sodium, gelatin, citric acid and a filler.

In December 2018, 139 individuals claiming to be patients affected by side effects related to the new LEVOTHYROX® formulation filed a lawsuit in front of the Paris TGI, requesting the revocation of the EP’005 patent. They were later joined by 34 additional individuals as well as a patient association, Alerte Thyroïde.

As a defense, Merck Patent GmbH claimed that the plaintiffs lacked standing. A hearing on this defense took place on December 4, 2019, and the judgment has just been handed down. The court has sided with Merck and dismissed the nullity suit for lack of standing.

To some extent, the outcome is unsurprising. As I said in the beginning, the appraisal of standing in patent nullity suits is harsh – excessively so, in my view. If even competitors of a patent owner are sometimes considered as lacking standing, a reasonable gut feeling would be that there is no way individual patients or even a patient association can have standing.

But in fact, looking at the reasons for the decision, the court seems to have actually walked a fine line when deciding the issue.

The starting point in the reasoning is article 31 Code de procédure civile, per which “any person having a legitimate interest in having a claim accepted or rejected may initiate legal proceedings, except if the law restricts the possibility to sue to specific persons […]“.

First, the court recalled the usual criteria that are applied when the litigants are competitors:

When the nullity action relates to two competing parties, the advantage expected from the action under article 31 Code de procédure civile is traditionally understood […] as being an improvement in the legal situation of the plaintiff. It is generally requested from said plaintiff that they should demonstrate the existence of a sufficient interest to free a future exploitation of the patented technology or a similar one. 

But then the court accepted that non-competitors, including members of the general public, could also have standing under article 31:

However, […] the competition / economic case is not the only situation in which a nullity suit could be initiated, and cannot define standing, which by nature is shape-shifting. Therefore, the standing of the plaintiffs, who are not competitors of the proprietor of the patent at stake but consumers and patients directly impacted, notably in terms of material and financial availability of the drug subject to a monopoly, must be appraised in concreto, based on the object and the purpose of the nullity suit […], without neglecting the fact that such an action, which aims at terminating any undue monopoly, is also useful for the general interest, since a revocation would benefit to all. 

There are different ways to achieve standing.

In other terms, the court did not completely close the door to the initiation of patent nullity proceedings by non-traditional plaintiffs. The notion of “general interest” in the last sentence is in fact pretty far-reaching.

The court went on in the following terms:

In fact, whether the grant of a patent is a compensation for investments and efforts made by the creator of the invention or for the disclosure of the invention, it confers a beneficial monopoly to its owner, and additionally an undeniable control over prices. In a context of free competition and free innovation, this is legitimate and admissible only if the validity conditions are met. It is of general interest, in particular in the pharmaceutical field and in case public prosecution, which is first and foremost in charge of defending general interest, fails to act, that an end should be put to the monopoly when the patent is invalid or merely aims at preserving a monopoly conferred by a previous patent about to expire, thus allowing competing generic pharmaceutical companies to offer accessible generic drugs at a lower cost to patients in need of the initially patented drugs. 

I have never heard of a public prosecutor filing a patent nullity suit to open up a market. But the court, based on the above statements, seems to accept the possibility that members of the public could take up this role.

In this respect, the plaintiffs precisely argued that the patent generally protects any levothyroxine formulation containing citric acid, gelatin and any filler, so that the existence of the patent prevents competitors from marketing alternative formulations with other fillers. This is relevant because the filler used in the new LEVOTHYROX® formulation, namely mannitol, was suspected to be responsible for the side effects.

The court responded to the argument as follows:

It is true that, by suppressing the monopoly on [the new formulation] in France, the revocation of the French part of the EP’005 patent […] would not only make it possible to market generics of this drug with perhaps a reduced price, but would also make it possible for other laboratories to make a formulation identical to the old formulation of LEVOTHYROX, which is, according to the plaintiffs, currently impossible because it may infringe the patent at stake which unduly covers the old formulation. 

However, as rightly noted by the defendant, the potential success of the nullity suit would not result in the automatic production and marketing of the old formulation […], which currently no longer benefits from a marketing authorization. 


The causal link between the nullity suit and the expected effect, namely that Merck or a third party should resume the manufacturing and marketing of [the old formulation] thus appears to be purely hypothetical and may not improve the legal and/or economical situation of the plaintiffs, so that they do not have standing in this case. 

In summary, the ultimate goal of the plaintiffs was to have a different levothyroxine drug available on the market. The court acknowledged that the revocation of the patent would be helpful for this goal. But it would not automatically result in the achievement of the goal, as a MA for a different drug would still be necessary – and is currently lacking.

To my mind, the reasoning is not really satisfactory. Has the court considered that a pharma company may not want to take the pain of requesting a new MA if a patent stands in the way? Therefore, can’t the revocation of the patent be considered as a necessary prerequisite for achieving the claimants’ stated goal?

At the risk of oversimplifying the discussion, shouldn’t any person or company willing to spend the (sometimes considerable) time and effort needed to revoke a patent be presumed to have a legitimate interest in the revocation? Shouldn’t the standing bar be lowered so as to only set aside abusive and frivolous lawsuits?

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, January 24, 2020, Alerte Thyroïde et al. v. Merck Patent GmbH, RG No. 18/14575.

The dead line

There is something ominous about the word “deadline” in English.

It makes you suspect some dire background. And rightly so, according to some online resources, which mention a line that you would cross at the risk of losing your life.

The French word “délai” sounds much less sinister, but the consequences of missing a “délai” are pretty much the same as those of missing a “deadline“, as a recent decision of the Paris Cour d’appel reminds us.

In this case, a French patent application was filed on November 6, 2015, claiming the benefit of the filing date of an earlier French application, namely April 1, 2015. This is what is sometimes conveniently referred to as an “internal priority claim“.

One of the requirements of claiming an internal priority is that you must provide a copy of the initial patent application (plus you must identify the modifications made in the later filing). As the applicant failed to do so upon filing the later application, the INPI issued a communication dated August 9, 2016 and notified on August 16 to the representative, inviting the applicant to submit the missing copy within a two-month period.

The applicant still did not file the requested document, so that a decision to refuse the application was issued on November 4, 2016, and notified on November 10, 2016 to the representative.

On January 8, 2018, the applicant filed a request for restoration of its rights. On August 17, 2018, the INPI issued a negative decision, holding that the request for restoration was inadmissible as it was filed past the statutory deadline.

The applicant lodged an appeal in front of the Paris Cour d’appel, which resulted in a judgment dated November 5, 2019.

The key provision in this case is article L. 612-16 Code de la propriété intellectuelle:

The applicant who failed to comply with a deadline set by the [INPI] may file a request for restoration of its rights, if it has a legitimate excuse and if the non-compliance directly resulted in a refusal of the patent application or of a request, in the lapse of the patent application or patent, or in the loss of any other right. 

The appeal must be filed […] within a two-month deadline from the removal of the cause of non-compliance. The missing act must be performed within this deadline. The request is admissible only within a one-year deadline from the expiry of the missed deadline.


The main question is that of the starting point of the one-year deadline. The INPI currently considers (and this is reflected in its Guidelines for examination, section E.3.3.1.b, Oct. 2019 edition) that the “missed deadline” starting point is the “initially missed deadline”.

As a side note, this did not appear in the previous versions of the Guidelines – I suspect that they may have been modified based on the present case.

Here, the applicant was notified on August 16, 2016 of the invitation to file the copy of the earlier filing. The deadline for filing this copy expired on October 17, 2016. The INPI thus deemed that the one-year restoration deadline expired on October 17, 2017.

The talking calendar – the must-have gadget for handling your deadlines this year.

The applicant’s defense relied on the fact that there was another possible legal remedy, namely a request for further processing. See article R. 612-52 Code de la propriété intellectuelle:

If a patent application is refused or may be refused due to non-compliance with a time limit set by the [INPI], the refusal is not issued or is revoked if the applicant files a request for further processing. The request must be filed in writing within a two-month deadline from the communication of the refusal decision. The missing act must be performed within this deadline. The request is admissible only if the required fee is paid. 

Thus, the applicant argued that the missed deadline was the two-month further processing deadline, and not the initial two-month deadline starting from the INPI communication. The request for restoration was thus filed with respect to the further processing deadline.

This reasoning will probably sound familiar to many European readers, as this is exactly the approach used at the EPO.

Applying this reasoning to the facts at hand, the deadline for requesting further processing expired on January 10, 2017 (date of notification of the refusal decision + 2 months), and therefore the one-year restoration deadline expired on January 10, 2018 – so that the request for restoration was timely filed.

But the appeal judges did not follow this argumentation. They stuck to the INPI’s interpretation of L. 612-16 and considered that the missed deadline used as a starting point must be the initial missed deadline, and not the further processing missed deadline. The INPI’s decision was accordingly confirmed.

Don’t ask me for the reasons why they chose one interpretation over the other. They just did, and there is no actual justification in the judgment.

This is all the more unfortunate as the summary of the facts reveals that two interesting case law decisions were discussed by the petitioner: a cassation ruling dated April 15, 1986, and a later judgment of the Paris Cour d’appel dated January 14, 1987.

The petitioner argued that the INPI misinterpreted the 1986 cassation ruling – from which it can be inferred that this ruling was the basis for the INPI’s position.

The facts underlying the 1986 ruling are that a patent application was refused for failure to pay the grant fee; a request for restoration was filed but it was held inadmissible as it was filed more than one year after the expiry of the time limit for paying the grant fee. The petitioner tried to take advantage of an additional two-month period corresponding to the filing of a request for further processing – to no avail.

The cassation judges stated the following: 

The non-compliance of the deadline for the request for further processing is not excluded from the provisions of [what is now art. L.612-16]. But the provisions of [what is now art. R. 612-52] do not result in extending the one-year deadline set in the second paragraph of [what is now art. L.612-16]. The Cour d’appel held that, irrespective of the grounds for the request for restoration, it is only admissible within a one-year deadline from the final date on which the initially omitted act had to be performed, and therefore rightly justified its decision. 

This is quite clear, right? The one-year deadline must be computed from the expiry of the initial deadline. Well, not so fast.

Looking at the specifics of the case that led to the 1986 cassation ruling, it turns out that, in that case, the request for restoration had been filed with respect to the initial time limit (i.e. the time limit for paying the grant fee). It had not been filed with respect to the (missing) request for further processing. 

Let’s now turn to the second case discussed by the petitioner. It is an appeal judgment which was issued after the 1986 cassation ruling. In this case, it was also the grant fee which was not paid in time. But the difference is that the applicant filed a request for restoration with respect to the (missing) request for further processing.

And the appeal judges computed the one-year deadline from the expiry of the period for requesting further processing, not from the expiry of the initial deadline for paying the grant fee: 

[…] The petition is admissible as to time limits. Indeed, according to [what is now art. L.612-16] the time limit for filing a request for restoration is one year from the expiry of the deadline not complied with. The request for further processing was due by April 17, 1982, so that the time limit for filing the request for restoration expired on April 17, 1983. The request for restoration was filed on April 15, 1983.

In summary, reading between the lines, we have:

  • On the one hand, a 1986 cassation ruling which could at first sight be seen as supporting the INPI’s position, except that the facts were different and that the relevant statement in the ruling is ambiguous. There is a reference to “the initially omitted act” but it is unclear what we should make of it. The cassation judges did simply not have to decide on a request for restoration with respect to a request for further processing.
  • On the other hand, a 1987 appeal decision based on facts similar to the present facts, and that is manifestly contradictory with the decision commented on today.

It is thus a real pity that the Cour d’appel did not seriously address these issues. 

I would also add that, one a purely pragmatic standpoint, it seems to me that there may be some contradiction in the INPI’s approach (and in the court’s present approach) to this matter. Indeed, the INPI acknowledges that a request for restoration may be filed with respect to a missed deadline for a request for further processing. This is stated in the table that you can find on the last page of the Guidelines for examination.

But what is the point in requesting restoration of right with respect to the further processing deadline, if the one-year time limit is to be computed from the initial missed deadline? I cannot think of any situation in which requesting restoration with respect to the further processing deadline would then be of any use.

I would not like to conclude this post without wishing all readers a very happy new year.

I hope that I have not missed the deadline for doing so – but hey, I have always heard that it is all right to send your best wishes until January 31. This may not be true elsewhere, but as you can see there is some cultural specificity about French deadlines.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, November 5, 2019, … v. Directeur Général de l’INPI, RG No. 18/20057.

The opposition battleground

As regular readers of this blog now know very well, the recently enacted loi PACTE authorized the government to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent in France.

This is of course a major change and an exciting development for patent professionals, in particular patent attorneys – but also INPI examiners.

I have had the privilege to work with them over the past few months as part of an opposition training program, and I must say that it has been a real pleasure. They are very well aware of the various challenges that they will face, but also enthusiastic and eager to get into it all.

A draft of the ordonnance as well as of the implementing rules (décret) has been released on November 22. It is in the process of being dissected and commented upon by various professional associations. Just like in my previous post on the draft provisions regarding utility certificates and provisional applications, there may be some changes in the final version. But we now probably have a pretty good idea of what the system will look like.

Ready for battle?

One convenient way to look at it is to break down the various provisions into two groups: those which are identical to EPO opposition proceedings, and those which are different, or which are specific to French opposition proceedings.

Oh, and I have focused on the main points only.

As an initial warning, whenever I refer to the INPI in the following, it is in fact the Director of the INPI who is formally mentioned in the draft. French law  peculiar: it is drafted as if the head of the patent office were the only person working on cases and issuing decisions…

Let’s start with the familiar waters of EPO-like provisions:

  • The time limit for filing an opposition is 9 months from the publication of the mention of grant of the patent. There can be no restoration of right with respect to this time limit, if the would-be opponent misses it.
  • Any person can file an opposition. In other terms, no standing is required, and straw man oppositions are allowed.
  • Parties must be represented by a patent attorney or an attorney at law if they reside outside of the European Economic Area.
  • The grounds for opposition will be extension of subject-matter, insufficiency of disclosure, lack of novelty, lack of inventive step, and the various sorts of exclusion from patentability / exception from patentability.
  • The opposition can be filed against all claims or only some of them.
  • The notice of opposition must comprise the identity of the opponent, the reference of the opposed patent, a statement of grounds, facts and evidence, the justification that the opposition fee has been paid (the amount of this fee has not been published yet) and optionally the appointment of a representative.
  • If the notice of opposition is defective, the opponent gets an opportunity to regularize its filing, but this needs to be done within the 9-month deadline (except for the appointment of the representative). Otherwise, the opposition is rejected as inadmissible.
  • If several oppositions are filed against the same patent, they are joined into a single opposition procedure.
  • The opposition proceedings comprise a written phase and an oral phasei.e. oral proceedings are summoned upon request of at least one party or upon decision of the INPI itself.
  • The opposition procedure is adversarial – there is thus a right to be heard for each party at every step of the procedure.
  • During the opposition proceedings, the patent proprietor may modify the claims of the patent to address a ground for opposition (but please note that the current draft specifies: a ground for opposition raised by the opponent, which is more restrictive than R. 80 EPC).
  • Of course, any amendment filed during opposition must not introduce any extension of subject-matter, nor any extension of the scope of protection. The amended claims must comply with the requirements of clarity and sufficiency of disclosure (let’s see whether the INPI adopts the same approach as G 3/14).
  • The decision on the opposition has retroactive effect back to the filing date of the patent.
  • If the patent is amended, a new patent document is published, once the decision has become final.

Let’s then turn to those provisions which are so French:

  • Oppositions can be filed not only against patents but also against utility certificates. However, SPCs cannot be opposed.
  • The timeline of the opposition proceedings is slightly different.
    • First the patentee is invited to reply to the opposition, with a deadline prescribed by the INPI (and thus not set in the draft provisions).
    • Then, the INPI sends a preliminary opinion on the case within a 2-month deadline from the expiry of the patentee’s response deadline.
    • This preliminary opinion is communicated to the parties, who are invited to file written submissions within a prescribed deadline.
    • If at least one party files written submissions at this stage, the other parties are invited to file a response within a prescribed deadline.
    • Parties are optionally summoned to oral proceedings.
    • Finally the INPI issues its decision.
  • The opposition is deemed rejected if the INPI fails to issue a decision within 3 months from the closure of the examination of the opposition. Said closure takes place either when a deadline to file observations expires, if the parties fail to file observations or request oral proceedings; or at the latest on the day of the oral proceedings.
  • Not only the scope, but also the reasons for the opposition cannot be extended after the expiry of the opposition time limit.
  • There is no equivalent to art. 105 EPC, i.e. no possible intervention of an alleged infringer after the 9-month deadline.
  • The opposition is stayed in case of claim for ownership of the patent in front of the Paris TGI, or if a claim for revocation is pending in front of a court when the opposition is filed, or if the INPI is waiting for information relevant to the opposition or the situation of the parties, or if all parties request so (for a maximum duration of four months, renewable once). This latter provision will be useful in case the parties are in a negotiation process.
  • There are four possible outcomes of the opposition proceedings: rejection of the opposition, maintenance of the patent in amended form, full revocation. And the fourth one is: partial revocation. In other terms, the INPI will look at all of the challenged claims one by one and may decide that some of them are invalid and others are valid. In that case, only the invalid claims will be revoked. This stands in sharp contrast with the EPO practice of looking only at a set of claims as a whole, a single defect in the set meaning that it has to go down completely.
  • In case of a partial revocation, the patent proprietor will be requested to provide a modified set of claims complying with the partial revocation. The modified set of claims is refused if it is not compliant.
  • The INPI may not continue the opposition proceedings in case all opponents have withdrawn their oppositions, or in case the patent has ceased to be in force.
  • An examiner having examined the patent application may not work on the opposition, but he or she can be heard during the opposition proceedings.
  • A request for limitation is inadmissible if filed when an opposition is pending. If a limitation procedure is ongoing when an opposition is filed, the limitation procedure is closed. But there is an exception if the request for limitation is in the context of a nullity suit.
  • Upon request of the winning party, the losing party is ordered to pay part or all of the costs of the winning party, within the boundaries of an official fee schedule (to be determined).
  • An appeal against the opposition decision can be filed in front of the Paris Cour d’appel within a one-month deadline from the communication of the decision. The statement of grounds of appeal needs to be filed within a three-month deadline from the notice of appeal. The defendant has a three-month deadline from the communication of the grounds of appeal to file its reply brief and possibly a counter-appeal. The parties will need to act through an attorney at law.
  • Third parties may intervene in these appeal proceedings, either in a voluntary or forced manner. Normal rules of civil procedure will apply here.
  • The court re-judges the entire case, in fact and in law. It is explicitly stated that the parties can file further grounds, evidence and arguments relative to the first instance. This does not extend to new requests, in the general sense of the term (“prétentions“), unless they are related to an intervention on appeal, occasioned by a new fact, or have the same aim as those filed in first instance, even on different legal grounds.
  • All deadlines on appeal are extended by one month for parties residing in French overseas territories and by two months for parties residing abroad.
  • The INPI will not be a party to the appeal proceedings. But it gets the opportunity to make written or oral submissions.
  • After the appeal ruling, the parties can file an appeal on points of law in front of the Cour de cassation. The INPI can also file such a cassation appeal.
  • There is an estoppel principle: a claim for nullity of a patent is inadmissible if a final decision on an opposition having the same object and the same cause has already been issued between the same parties.

This is a lot to process, and it is actually unfortunate that stakeholders have been given only something like two weeks and a half to provide their comments.

This new opposition procedure is a major development, and many provisions may have unforeseen consequences which it would be good to have time to think about.

So far, I have heard colleagues wonder or worry about two points in particular.

One is the automatic rejection of the opposition if the INPI does not issue its decision in due time.

This is one of those so-called SVR (“silence vaut rejet“) provisions that popped up everywhere a few years ago. Such automatic rejection would of course be highly unfair to the opponent.

However, I am not excessively preoccupied. We already have to live with SVR deadlines, and I am certain that the INPI will do whatever it takes not to fall into the trap of an automatic rejection. Besides, we are actually lucky that the SVR deadline is computed from the closure of the examination of the opposition: thus, the INPI will have the complete submissions at hand and can work on its decision within the deadline. It would have been much riskier if the SVR deadline had been computed, say, from the filing of the opposition – regardless of the number and timing of the parties’ submissions.

Another point that has everyone gossiping is the role of the INPI on appeal.

Indeed, the INPI can make submissions. If they make use of this right, it means that they will necessarily side with one party or the other. Besides, they even have the right to file a cassation appeal once the appeal decision has been issued. Isn’t it strange for the patent office to first have to act as an impartial arbitrator between the parties and then become a quasi-party or an actual party to the proceedings at a later stage?

Like my colleagues, I also have questions of my own.

For instance, will the INPI apply EPO-like standards or rather French court standards when examining oppositions?

I am not talking here about the problem and solution approach or about the gold standard, because I do not believe that there is a huge difference between Munich and Paris in this respect. I am mainly talking about claim interpretation. On this particular topic, the EPO and French courts could not be further apart.

The many differences between the proceedings in front of the INPI and at the appeal stage also raise some concerns.

For instance, there can be no intervention in first instance, but there can be on appeal. Furthermore, as far as I understand, the opponent will be severely limited in terms of any new objections that it may come up with in first instance, after the expiry of the 9-month time limit; but new objections, on the other hand, may be allowed on appeal. Isn’t this contradictory?

Once we have the final provisions in front of us, there will be a lot of strategic planning to make, both in terms of patent drafting (think about this notion of partial revocation, which is certainly an incentive to have as many validity fallbacks in a granted patent as possible) and in terms of freedom-to-operate / litigation.

To be continued, for sure!

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.

The provisional provisions

Further to the recent enactment of the loi PACTE, a game changer for French patent law, a whole bunch of implementing rules was due to ensue.

We have now had a glimpse of what the first salvo of the implementing rules will look like, as the DGE (Direction Générale des Entreprises) has just released a draft of executive order. Comments are in the process of being collected by various professional associations such as the CNCPI, the French AIPPI group, and others.

The purpose of this draft executive order is twofold: to redesign the rules on utility certificates; and to introduce the concept of provisional patent applications.

Let’s start with utility certificates. As a reminder, according to article 118 of the loi PACTE, the maximum duration of utility certificates is supposed to be brought from 6 years to 10 years; and it will now be possible to convert a utility certificate application into a patent application, whereas only the opposite is possible as of today.

The draft executive order specifies that the request to convert a utility certificate application into a patent application needs to be filed within 18 months from the filing or priority date, and at any rate before technical preparations for publication are completed. The deadline for requesting the opposite conversion (from patent application to utility certificate) will be aligned accordingly.

Protection of legal certainty for third parties was certainly the main concern here. By the time the patent application or utility certificate gets published, the fate of the IP right will be fixed – either patent or utility certificate application.

The main difference then between a patent application which was filed as such and a patent application stemming from a utility certificate application is that the former will generally be published together with a search report (assuming that it is a first filing), while the latter may not (since no search report is established for utility certificates). I wrote “assuming that it is a first filing“, because search reports for patent applications claiming a foreign priority are generally established at a (much) later stage.

The deadline for paying the search fee for a utility certificate application converted into a patent application will be 1 month from the request for conversion.

Regarding the increase in duration of utility certificates, from 6 to 10 years, a big question mark at the time the loi PACTE was published was that of transitional provisions.

A note issued by the DGE together with the draft executive order mentions that, in the absence of any specific provision in the law, the 10-year duration will apply to all utility certificates in force at the date of entry of the law into force.

The note explains that an IP right is not an “acquired right” but an “ongoing legal situation“, which justifies this solution – which would be different if, for instance, we were talking about a statute of limitations.

I guess the protection of interests of third parties was not so much of a concern for this part.

Interestingly, special transitional measures are planned for utility certificates which are almost 6-years old when the law enters into force. It will exceptionally be possible to pay the 7th renewal fee up to four months after the entry into force of the executive order (or within an additional 6-month grace period starting from the expiry of the above deadline).

Stretching utility certificates.

This now brings us to the second aspect of the draft executive order, namely the advent of provisional patent applications.

This was not mentioned in the loi PACTE and is a complete creation of the executive order. But we knew that it was coming, since rumor has it that it has been one of President Macron’s pet projects for a number of years.

So here is what we will be looking at:

  • A provisional application shall comprise a request for grant, a description and drawings. Claims and an abstract may be included – but they are not required. Similarly, when a French priority is claimed, a marked up copy of the prior filing must be included when a regular patent application is filed, but this will not be necessary if a provisional patent application is filed.
  • Only the filing fee is due, within one month after filing (whereas, for a regular patent application, also the search fee is due within the same deadline).
  • The applicant may request that the provisional application be made “compliant”, i.e. that it be transformed into a regular patent application, or into a utility certificate application, within 12 months from the priority date. I understand that this will require filing the claims / abstract / marked up copy of the prior filing, if these elements were not provided on the filing date – though I must say that this is not clear in the draft.
  • If this is not the case, the provisional application will be deemed withdrawn (this notion of fictional withdrawal is one which we are very familiar with under the EPC, but it is new in French patent law).
  • The deadline for paying the search fee will be one month after filing the request to make the application compliant.
  • A patent application cannot be made “provisional” after filing, it has to be marked as provisional from the start.
  • The defense administration will review provisional patent applications and authorizations to disclose the invention will be issued, similarly as for regular patent applications.
  • The provisional application can claim a French priority, as suggested above.
  • However, if there is a Paris Convention priority claim, then this will be interpreted as a request to make the application compliant – so, the applicant will not be able to keep its application as a provisional one. My understanding is that this may be because a Paris Convention priority claim can be filed up to 16 months after the earliest priority date, which sort of conflicts with the 12-month deadline for making the provisional application compliant.
  • If the applicant files a request for early publication, a request to make the provisional application compliant will have to be filed at the same time, otherwise the request for early publication will be inadmissible.

So, what can we make of these new provisional patent applications?

This is a new tool that few – if any – in the patent profession asked for. In fact, most of us did not understand at all what the point was.

It should be borne in mind that getting a filing date for a (regular) patent application (which may thus serve as a basis for claiming priority in France or abroad) only requires filing a description.

The claims and abstract are not necessary. Neither is the payment of any fee (not even the filing fee). So, regular patent applications already provided the same benefits as the future provisional patent applications.

The way I see it, the only difference is that a provisional application can be made into a regular patent application without having to refile. But this is a very slight advantage, and it will also result in an overall duration of scope of protection which will be reduced (since, when you refile 1 year after the initial filing, you can get 20 years of protection from the second filing).

Even after reading the draft executive order, I still cannot see in what circumstances I would recommend filing a provisional patent application.

The answer to the conundrum can probably be found in the following statement in the DGE’s explanatory note:

Feedback from innovative business and start-up entrepreneurs has shown that they are reluctant to undertake to protect their inventions. The patent filing system, due to its formalism, is often perceived as onerous and costly. 

I would thus say that all of this is really about communication and perception, not about actually providing additional useful legal tools to applicants.

After all, this can be a valuable reason. Let’s not underestimate the importance of communication and perception.

However, one major concern is that this communication and perception effort may ultimately result in miscommunication and misconception.

If “innovative business and start-up entrepreneurs” believe that filing a draft of scientific paper, or even an invention memo, as a provisional application, without drafting claims and without working with a patent professional, can serve as a basis for a strong future patent application, or even can secure them a priority date, they are in for some serious disappointment. Think G 2/98; and think “gold standard“, which is applied under French law in a similar manner as at the EPO.

Patent law is complex, patent rights are difficult and costly to obtain and enforce. This is a fact, not an erroneous perception. Aren’t people better off if they are aware of this reality, rather than believe that a provisional filing is a cure-all?

A last word on the date of entry into force of the new system.

The rules on the transformation of utility certificate applications into patent applications will enter into force the day after the publication of the executive order. As for the rules on provisional patent applications, they will enter into force on July 1, 2020.

Please bear in mind that the executive order is not yet in its final form and that the draft may still be amended, especially based on input from stakeholders. But I suspect that only minor bugs will be fixed, and only clarifications / editorial changes will be made.