Opposition guidelines – part 2

As promised by the INPI, the second and final part of their patent opposition guidelines has now been released. Here is the link to download the full pdf document. And as promised by me, here is now a summary of this new installment. As you will see, we now have a much clearer view of what the opposition à la française is going to look like. As a reminder, the presentation of the first part can be found here.

The opposition procedure consists of an admissibility phase, an instruction phase and a decision phase. I will pick up my comments again at the instruction phase, which starts after the expiry of the 9-month opposition time limit and after the end of the admissibility phase.

Notification of the opposition(s)

The INPI will “immediately” (French text: “sans délai”) notify all admissible oppositions to the patent proprietor and invite them to reply. As a side note, the admissibility phase seems to be ex parte, solely between the opponent and the INPI. I wonder whether the proprietor will be able to challenge the admissibility of the opposition after the so-called admissibility phase.

As to the notion of immediate notification to the patent proprietor, my understanding is that the notification will anyway not take place before the expiry of the 9-month time limit (even if an admissible opposition is filed a few days after the grant of the patent), as the instruction phase only starts after this expiry. Besides, in the case of multiple oppositions, the proceedings are supposed to be consolidated.

Overall timeline of the opposition proceedings

  • In its official communication to the patent proprietor, the INPI will invite the proprietor to respond to the opposition within a 3-month deadline, designated as “the first deadline“.
  • Within three months from the proprietor’s response, the INPI will communicate to all parties its preliminary opinion on the case, and invite all parties to file further observations within a 2-month deadline, designated as… “the second deadline“.
  • If one or more parties file observations within this second deadline, a so-called “written phase” begins. Each party will be invited to comment on the other parties’ submissions within another 2-month deadline  – yes, “the third deadline”, you nailed it!
  • Then the back and forth stops: no invitation to respond to submissions made within this third deadline will be sent.
  • An “oral phase” will take place upon request of one the parties, or on the INPI’s own motion (the expression “oral proceedings” was probably copyrighted).
  • If an oral phase takes place, summons to the oral phase will be issued, together with an additional opinion listing the main points to be addressed during the oral phase.

The first, second and third deadlines are not extendable. This means that the timeline is going to be tight, and the parties will have to be very quick.

Never play a game before carefully reading the rules.

Oral phase

The oral phase will take place at the INPI, in front of the “opposition commission” (the expression “opposition division” was probably copyrighted). As a reminder, this commission comprises three examiners. The chairperson can decide to add a legal member to the commission. The oral phase is public and will be conducted quite similarly to oral proceedings at the EPO. In particular, the opposition commission may interrupt the oral phrase for an interim deliberation, and the chairperson may then announce an intermediate opinion on one particular aspect. At the end of the oral phase, the chairperson will close the instruction phase of the opposition. It is not clear whether the final decision will be announced orally or not.

For the time being, the guidelines do not mention the possibility to conduct the oral phase by videoconference. I expect that the first hearings will likely not take place before approximately one year from now, which leaves some time for the INPI to decide to add this option, if they so wish.

Decision phase

If an oral phase takes place, the instruction phase ends once the oral phase is closed. In the alternative, the instruction phase ends:

  • at the expiry of the second deadline, if the parties have not replied to the invitation and have not requested to make oral observations;
  • or at least at the expiry of the third deadline, if the parties have not requested to make oral observations.

The end of the instruction phase is communicated to the parties. Then starts the decision phase, in which the INPI will draft and notify a reasoned decision on the opposition. If a decision is not issued within four months, the opposition will be rejected by default (the infamous “silence vaut rejet” principle). As already mentioned on this blog, the INPI will certainly make every effort so that this never happens.

The appeal deadline will be triggered by the receipt of the decision. As a reminder, the appeal will have to be filed in front of the Paris Cour d’appel, which is an entirely different kettle of fish. The appeal deadline is one month for a party residing in mainland France, two months for a party residing in the overseas territories, and three months for a party residing abroad – a rather unfortunate inequality. Appeal submissions must then be filed within three months after the notice of appeal.

Possible outcomes

The possible outcomes of the opposition are: the rejection of the opposition, the full revocation of the patent, the maintenance of the patent in amended form, but also… the partial revocation of the patent.

This fourth possible outcome is ambiguous in the statute and has given rise to some speculation. The guidelines give the example of an opposition challenging only claim 1, and a proprietor not filing any claim amendment. The INPI could then revoke claim 1 only. I wonder if this situation of partial revocation would also occur if the opponent challenges all claims, but the INPI concludes that only claim 1 is invalid.

In case of a partial revocation, the patent proprietor will be invited to file a request for modification of the patent in keeping with the decision of partial revocation. However, there is no deadline for doing so and no negative consequence if the patent proprietor remains inactive.

Commentators’ suspicions are thus confirmed: the partial revocation procedure does seem kind of messy.

Modifications of the patent 

The patent proprietor may file a modification of the patent at at least three stages: within the first deadline, the second deadline and the third deadline set out above. Any modification filed later, especially during the oral phase, will be deemed late-filed. Once the instruction phase is over, no more modification will be allowed.

Any modification of the patent must be occasioned by a ground for opposition raised by the opponent. This is more restrictive than at the EPO, where a modification may be filed to address a ground for opposition not raised by an opponent.

Naturally, amended claims will have to comply with all of the requirements of the Code de la propriété intellectuelle.

Interestingly, the description can only be amended to address the ground for opposition of insufficiency of disclosure. This provision is surprising. I do not expect that an objection of insufficiency of disclosure can frequently be overcome by amending the description – without adding new matter. What this also implies is that the description will not need to and actually cannot be adapted to amended claims. This is partly consistent with the examination guidelines, which do not require – but allow – an adaptation of the description when claims are amended in response to the search report.

Claim amendments can be filed in the form a main request and one or more auxiliary requests, which will be assessed in the order of preference stated by the proprietor, provided that their number is reasonable.

Late-filed submissions

The scope of the opposition and the grounds for opposition cannot be extended after the 9-month opposition deadline. This is more severe than at the EPO, wherein a late ground for opposition may be taken into account by the opposition division if it is prima facie relevant.

Facts and evidence which are not filed in due time by the parties may be admitted into the proceedings, at the INPI’s discretion. Factors to be taken into account include the relevance of the late-filed submission, the circumstances of the late filing and the possibility for all parties to debate it. This will apply in particular to new requests filed on the day of the oral phase.

A new submission made in the instruction phase as a direct and timely reaction to a submission of another party will not be considered late-filed.

It seems that new arguments may not be considered as late-filed. There is even a statement in the guidelines per which the parties should not merely repeat arguments already made in writing, during the oral phase – which sounds like an invitation to submit new arguments on the day of the oral phase.

That said, the boundary between new facts and new arguments probably remains to be determined. For instance, if a novelty objection based on D1 and an inventive step objection based on D2+D3 are raised within the 9-month period, will a new novelty objection based on D2 be considered as a late fact or a late argument (which would therefore be necessarily admissible)? How about an inventive step objection based on D2+D1? or based on D1+D3?

Language 

The language of the proceedings is French. Submissions must be filed in this language, otherwise they are inadmissible. French will also be the language used in the oral phase. The parties may bring their own interpreters to the oral phase.

Any exhibit or evidence should in principle be in French or translated into French. Otherwise, the INPI can invite a party to provide a translation within a deadline. It will be interesting to see how this provision will be implemented in practice. The majority of evidence filed in French opposition proceedings will likely be in English (or be translated into English). And it is a fact that all patent professionals, including INPI examiners, are able to read technical documents in English. We will see whether a French translation will be required for documents in the English language.

Stay of proceedings

There are several circumstances in which the opposition proceedings may be stayed: notably in case an ownership claim is filed in court, or if a nullity action is pending (although the judge may order a stay of the nullity suit, in which case the opposition can proceed).

As a more uncommon feature, the INPI may stay the proceedings if information is expected which may impact the outcome of the proceedings; or upon joint request of the parties, for a duration of four months, which can be renewed twice (thus for a total duration of 1 year). This may be useful in case the proprietor and the opponent need time to negotiate.

Apportionment of costs

For reasons of equity, for instance in the case of unjustified late submissions leading to additional expenditure, the INPI can order an apportionment of costs. However, the maximum amount to be apportioned is limited according to the following schedule:

  • 600 euros for costs incurred in the written phase.
  • 100 euros for costs incurred in the oral phase.
  • 500 euros for representation costs.

So the grand total would be 1200 euros, and it would likely only be possible to reach this amount in rather exceptional circumstances.

Therefore, it seems fair to say that parties may just as well completely forget about apportionment of costs, which will not be a factor – except for natural persons. The mere fact of requesting and arguing apportionment of costs may cost more than what may be finally apportioned.

* * *

These are the salient points that I have noted in the second part of the new guidelines.

Now that the first few oppositions have been filed – extremely few in fact, as far as I can tell based on recent issues of the Bulletin Officiel de la Propriété Industrielle – the opposition system is live. I hope readers will share updates on how it goes in practice.

Karmic retribution

Or should that be cosmic irony?

Today’s tale is that of an inventor applicant who is successful in obtaining the grant of a European patent – which is no small feat for a self-represented individual; and who then loses the French part of his European patent due to a minor misstep.

But he does not give up and is fully reinstated by the Paris Cour d’appel… due to what might also be a procedural error by the French patent office (INPI). Tit for tat.

And now, the somewhat more complete account of these events.

Mr. F (as he is referred to in the redacted version of the ruling) filed a PCT application in 2007, claiming the priority of a French patent application. The invention is a gas turbine engine. Based on this PCT application, a European patent was granted in 2011. If you have a look at the European patent register, you will see that the examination proceedings were mostly conducted by phone, the applicant being instructed which taxes he should pay and being advised as to which modifications would be acceptable for the examining division. Kudos to the EPO for explaining what needed to be explained – and for documenting these explanations in the record accessible to the public (more on this topic below).

Then, Mr. F started paying renewal fees at the INPI to keep the French part of his patent in force.

In 2015, the 9th renewal fee became due. That year, there was an increase in the schedule of fees, and the new rate was 180 euros. But Mr. F paid only 170 euros.

At the EPO, this would (presumably!) not have been a major difficulty, as “the EPO may, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment (Art. 8 RFees)” (Guidelines, A-X, 7.1.1).

But the INPI was not lenient. “Un sou est un sou” – every penny counts. Thus, the French part of the patent was declared lapsed on May 31, 2016.

There are two ways to challenge a declaration of lapse. One is a request for restoration of rights. The other one is a “recours gracieux which I would probably not translate into a gracious appeal, but rather a petition for reconsideration.

The INPI dismissed this petition for reconsideration in a decision dated February 6, 2018. It is against this decision that Mr. F filed an appeal with the Paris Cour d’appel.

And then what?

For starters, the INPI argued that the appeal was inadmissible because the notice of appeal neither specified the date and object of the decision under appeal, nor the professional occupation and birthplace of the appellant. As you can guess, Mr. F did not hire an attorney at the appeal stage either. Usually, this is not a good idea, but in this case the court was satisfied that the decision under appeal could be properly identified by the mention “I hereby appeal the INPI decision for the lapse of my patent“, and the appellant was allowed to simply provide the missing information at the hearing.

On the merits, the INPI argued that the procedure had been clean. Admittedly, no reminder of the grace period was issued after the due date for the renewal fee – but the INPI is not required to send such a reminder.

As for Mr. F, he claimed that he was never informed that his payment was insufficient; that he moved in 2012; and that, although he duly received all correspondence from the INPI, as an exception he did not receive the communication on the declaration of lapse and he only became aware of it more than one year and a half afterwards.

By the way, this is reminiscent of the infamous pravastatin case, in which an SPC was considered lapsed and then had to be reinstated due to a correspondence problem.

Here is now the court’s position:

The court notes that, based on the patent datasheet submitted by the INPI, Mr. F residing in Palluau is mentioned as the patent proprietor, but Mr. F residing in Le Pallet is indicated as the representative. It is at this “representative” address that the INPI sent him each year from 2012 to 2018 the renewal fee receipts, including that of November 12, 2015 for the amount of 170 euros.  

However, it has been established that the decision of declaration of lapse of May 31, 2016 was not sent to Mr. F at his address in Le Pallet, but at the one in Palluau; and that the registered letter came back with the mention “unknown recipient at this address”; and that these circumstances have prevented him to exert his rights to maintain or restore the patent in time.

It can be deduced from all of this that Mr. F’s appeal must be granted so that the decision to reject his petition for reconsideration is set aside. 

A rescue operation by the Cour d’appel.

Let me now express some conflicting observations.

First, the court’s reasoning may rest on shaky legal grounds.

Even if the declaration of lapse had been properly notified to Mr. F, it would still have been too late for him to pay the missing amount. Actually, declarations of lapse are only issued after the grace period is over, i.e. when it is already too late to redress the situation. A proper notification of this declaration of lapse would have enabled him to file a request for restoration – but it would not per se have entitled him to a reconsideration of his case.

Second, despite this somewhat shaky reasoning, I have a lot of sympathy for Mr. F – and thus for this judgment.

What happened to this inventor strikes me as mostly unfair. The INPI did not take any step to let him know that a minor amount of the recently increased renewal fee was still due, then messed up with the patentee’s contact information (how and why being unclear based on the judgment), and finally, as far as I understand, continued to bank the following renewal fees for several years despite the lapse.

Third, I assume that one of the reasons why the INPI stood its ground when Mr. F finally complained is the protection of the interests of third parties.

This is a very legitimate concern. It is true that reinstating a patent further to a procedure initiated a couple of years after the lapse (and thus initiated after the one-year restoration time bar) can also be very unfair – to third parties.

But I think one way to address this concern would be to make the office’s records more fully and readily available to the public, so that third parties can make their own assessment of the actual situation of any patent or application.

Progress has recently been made, but this is still not enough. If you look up the patent in suit on the INPI’s website, you will see that the only documents available for download are… the publication of the PCT application, and the B1 patent!

The declaration of lapse cannot be downloaded – let alone the no-delivery mailing receipt. The full renewal fee records cannot be checked – so that third parties cannot see that the patentee paid the major part of the 9th renewal fees and continued to pay the following ones. Last but not least, the “datasheet” mentioned by the court, in which the “representative address” is supposed to be indicated, can also not be retrieved from the website.

Some documents can probably be more or less easily obtained upon request – at least the communication on the declaration of lapse and hopefully the patentee’s petition for reconsideration and the INPI’s decision to refuse this petition. But I am pretty sure that not all of the relevant information can be obtained. Besides, this is 2020 – everything should be made available online.

Anyway, congratulations to Mr. F, and let’s hope he gets the next steps right when his patent is reinstated, especially regarding the payment of the various renewal fees.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, June 19, 2020, Mr. F v. Directeur général de l’INPI, RG No. 19/06949.

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.

Outdated soon

Glad to be back on the blog, with a report on a decision which already has the flavor of a thing from the past. I am very grateful to Philippe Schmitt for providing this judgment, after commenting it on his blog.

Thales, the famous electronics company, filed a French patent application at the INPI (Institut National de la Propriété Industrielle) on December 17, 2010. It was published under No. FR 2969124. A decision of refusal of the application was issued on July 17, 2018. Thales appealed, which leads us to the judgment at stake.

Here is claim 1 of the application, as modified during examination proceedings:

A method for displaying the steps of a mission of an aircraft on a screen of a display device, the mission being a flight plan, wherein each step corresponds to a waypoint of the flight plan, characterized in that the different steps are displayed in a first graphical window comprising a time scale, or “timeline” (TL), the different steps being displayed opposite the schedule corresponding to their accomplishment, and the length of the “timeline” is longer than the length of the first graphical window, and the graphical window therefore displays only a part of the “timeline”, this part being imposed by the user of the display device.

The application was refused by the INPI as they deemed that:

  • The application merely relates to a presentation of information associated to a mathematical method, without any technical features.
  • The claimed subject-matter cannot be searched and thus compared with the state of the art.

More precisely, the INPI considered that the problem at stake in the application was to facilitate the reading and correlation of data relating to the steps of an aircraft mission, provided by different display windows. In the absence of any such facilitation, operators have to check themselves the consistency of the information provided by various windows. Thus, the INPI held, the problem at stake relates to the interpretation of the data by the operators, and not to a technology of data representation. In other terms, the problem at stake is intellectual and not technical.

Regarding the last feature of claim 1, per which “the length of the “timeline” is longer than the length of the first graphical window, and the graphical window therefore displays only a part of the “timeline”, this part being imposed by the user of the display device”, the INPI remarked that the description of the application does not specify by which technical means the user displays “a part of the timeline“. Therefore, this feature is not characterized on the technical standpoint and no technical effect deriving from human-machine interactions is disclosed in the application.

The Paris court of appeal set aside the refusal, on the following grounds.

First, the court referred to the INPI guidelines and also to the EPO guidelines, regarding the definition of a “presentation of information“. The court thus held that information that is presented is not patentable, but that the way information is presented may comprise patentable technical features if it is distinct from the information itself. In particular, a feature which credibly helps the user perform a technical task owing to a continuous or guided human-machine interaction process provides a technical effect.

Next, the court analyzed that the objective of the patent is to transmit information to a user, more specifically the pilot or copilot of an aircraft, so that he/she has a consistent and integrated representation of the mission, in order to make decisions based on a complete knowledge of the state of the aircraft and of its environment.

The court then turned to the first characterizing feature of the claim, and concluded that it is not a technical feature. Namely:

The first feature relates to a window comprising the “timeline”, which displays the different steps opposite the schedule corresponding to their accomplishment. […] Such a window, oriented with past at the bottom and future on top, vertically divided in its center by a timeline, comprises way times on its left and remarkable way points on its right, including mentions such as speed, altitude, beside the current position of the aircraft represented by a symbol “A”. It thus appears that this feature, although it is key to the patent applied for, only relates to the transmission of information to the pilot of the aircraft, both concerning the cognitive information content (way times and way points) and the manner it is presented (as a function of a timeline). There is no distinct technical feature and it is thus not patentable per se. 

However, the court’s take on the very last claimed feature was quite different:

On the other hand, the second feature recites that when the length of the timeline is longer than the length of the first graphical window, the user (pilot) may display only part of the timeline (imposed by him/her). This is a technical means distinct from the content of the information itself. It should be added that this means helps the pilot select the most relevant of said information and thus produces a technical effect […].

In order to conclude that this feature is nevertheless not patentable, the [INPI] asserts that it only mentions a result to be achieved, namely imposing the display of part of the timeline, without clearly setting out the technical means allowing such result to be achieved. However, during examination proceedings, the [INPI] does not have the power to rule on the insufficiency of disclosure of the patent, so that this reasoning is moot. [The INPI] also asserts that this insufficiency of disclosure does not allow a comparison with the state of the art and the preparation of a search report. However, nothing prevents a prior art search, for instance in the “WL” window displaying the list of way points as a table, [to check] if the user can, when the length of this list is greater than the length of the window, display only part of this list. 

Presentation of information can be technical after all.

In summary, the court held that the last feature of the claim is a technical feature, so that the claimed subject-matter is an invention (or rather, is not a non-invention, as patent law is somewhat Carrollian).

The absence of disclosure of precise technical means in the description of the application should not be taken into account, the court added, since insufficiency of disclosure is not a ground for refusal of a French patent application.

In fact, the current list of grounds of refusal of a French patent application is quite limited. For example, lack of inventive step is not one of these grounds, and this is why there is no discussion of inventive step whatsoever in the judgment. This is also why the decision will be outdated soon, as additional grounds of refusal (including lack of inventive step) will be taken into consideration in the near future – see my previous report here on the Pacte bill.

A case like this one is actually probably a good argument in favor of this bill. Indeed, it makes little sense for the court of appeal to set aside a refusal without having to discuss or consider inventive step at all – which of course should be an important point to look at, since lack of inventive step is a ground for nullity of a granted patent.

This case has also made me realize that insufficiency of disclosure has not been introduced as a new ground for refusal in the Pacte bill. Why that is is a conundrum. If the aim is to strengthen French national patents and beef up examination proceedings, why leave a ground for nullity out of the INPI’s purview?

As a final remark, I am, like the court of appeal, unconvinced by the alleged impossibility to perform a prior art search. This is a current and actual ground for refusal, but in my view it should be limited to extreme cases in which the claims are for instance so poorly drafted that they are not understandable. On the other hand, as a matter of policy I do not believe that this provision should apply to features which are alleged to be non-technical – which is always a debatable notion, as shown above.

Now, here is another interesting thing. There is no European patent application equivalent to the French application at stake. But the French application was sent out to the EPO for a prior art search, as is the case for all French applications which do not claim a foreign priority.

And the file wrapper shows that the EPO examiner refused to perform the search, and noted that the claims “relate to a an abstract and generic process of displaying data, independently from any technology. This subject-matter is excluded from patentability, like any abstract method of graphical representation as such, as it is equivalent to a mathematical method“.

Therefore, to some extent, the INPI’s refusal was really based on an EPO examiner’s position.

The feature found to be technical by the court was present in claim 2 of the original claim set. So perhaps the EPO examiner did not pay as much attention to it as he should have. Or perhaps the Paris court of appeal has a more generous view of technical features than the EPO, when it comes to graphical user interfaces. Or perhaps the court would have found the claims invalid based on another ground if all grounds were within its purview.

When the new examination proceedings come into force, it can be expected that the number of refusals will markedly increase, especially in the particular field of technology of graphical user interfaces. This could give the court of appeal the opportunity to further elaborate on its views on this topic.

And if it turns out in the end that its stance is less strict than the EPO’s, this could entail a dramatic shift in filing strategies.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, May 21, 2019, Thales v. Directeur Général de l’INPI, RG No. 18/19669.

A packed Pacte

France has a funny bicameral system.

Both chambers of the parliament, the Assemblée nationale and the Sénat, get to debate on, amend and vote bills. But if they fail to agree on the same version of a bill, in the end the Assemblée nationale has the last word.

And so it is with the so-called “Loi Pacte“, first discussed on this blog post. There was some suspense as to what the bill would finally contain, as it bounced back and forth, being amended and dis-amended from one chamber to the other. But now the suspense has come to an end as the bill has been finally adopted and will become the law of the land.

Well, unless there is a last minute surprise, as the constitutionality of the bill will likely be challenged in front of the Conseil constitutionnel (our constitutional supreme court) by disgruntled members of parliament.

The final text is here and it is 408 pages long (yes, that is some packed Pacte). It has many different aspects, including some controversial ones – like the privatization of ADP (the company that runs Paris’ airports). It also contains some provisions on IP, including just a few ones on patent law – but they are very important provisions indeed.

Basically, the report that I previously made on the draft still stands, although the articles have been renumbered:

  • The maximum duration of utility certificates will be brought from 6 years to 10 years (article 118).
  • It will be possible to convert a utility certificate application into a patent application within a deadline which still needs to be determined, whereas only the opposite is possible as of today (article 118).
  • The government is authorized to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent (article 121).
  • The INPI (French patent office) will be able to refuse a patent application if its subject-matter is not an invention or is excluded from patentability, in contrast with the current formulation, per which its subject-matter is “manifestly” not an invention or is “manifestly” excluded from patentability (article 122).
  • The INPI will be able to refuse a patent application if its subject-matter is not novel or not inventive, in contrast with the current formulation, per which an application may be refused if it was not modified despite a “manifest” lack of novelty (article 122).
  • Infringement actions will be time-barred five years after the day the right owner knew or should have known the last fact allowing them to act, as opposed to the current formulation, which is five years “from the facts” (article 124).
  • The statute of limitations will no longer apply to patent nullity actions (article 124).

So, there you have it, I don’t know if it is spring or winter, but a new season is definitely coming.

In the year 2525 – if patents can survive.

So what next? Well, first we will have to carefully look at transitional provisions.

In this respect, I have noted the following:

  • The new provisions on utility certificates shall enter into force when the implementing decree is published, or one year from the publication of the law at the latest.
  • The timeline for the introduction of the opposition proceedings is still unclear, as it will depend on the regulations (ordonnance) that the government will issue.
  • Provisions extending the scope of examination of patent applications by the INPI shall enter into force one year from the publication of the law.
  • The new provision on the statute of limitations for nullity actions will immediately enter into force – but will have no effect on decisions that have become res judicata. It remains to be seen how this will be interpreted in practice.

The bottom line is that, regarding the biggest changes for patent applicants, patent attorneys and the patent office, we have some time to get prepared – but we all know how that usually flies.

The nitty-gritty of the new system is still unclear and will require our full attention.

Moreover, another question mark is how the INPI will adapt to this upheaval.

Based on a report on a meeting between the INPI management and representatives of the patent profession a few weeks ago, the following seems to be contemplated at present:

  • The projected date of entry into force of the patent opposition proceedings is January 1, 2020 (this is quite ambitious).
  • The projected start of the examination of inventive step is mid-2021 (this is because the new law will only apply to newly filed applications, I presume).
  • In terms of HR efforts, 15 patent examiners currently working on a backlog of national search reports will be redeployed to deal with opposition cases, and 16 new patent examiners will be hired to deal in particular with the increased workload related to the examination proceedings.

We also learn from this report that the new French “provisional patent application“, that we have heard of a number of times, is not dead. It should be created soon by way of a government decree.

I am curious to know what such a provisional application will look like. So far, patent professionals have been extremely skeptical about this – to put it mildly.

According to one apocryphal anecdote, President Macron was told by a French start-upper a few years ago that U.S. law is much more favorable to innovators than French law, because they have provisional applications in the U.S.

As a reminder, filing a French patent application without claims and without paying any taxes gives you a filing date, which is all you need to later claim priority. So, if there is any truth to this anecdote, it probably means that our President never met a French patent attorney – or at least that such a meeting did not leave as strong an impression as the ones he had with start-up folks. Which, let’s face it, is quite understandable.