Nightmares before Christmas

Beside the tribute to Tim Burton’s work in the title, this post is probably going to be of little interest to non-French patent attorney readers.

Sorry for that. 

On November 19, 2018, the INPI (French patent and trademark office) launched a new web-based patent filing system, called “Portail Brevets“, and shut down the good old EPO-style OLF system which we had been using for a number of years. 

It is likely that in the future the new system will be viewed as a major improvement, in particular because it should make an actual online management of patent applications possible.

But so far, I am sorry to say that it has been all but a nightmare for many users. The suddenness of the switch from the old system to the new system (no more OLF, no more fax, no more in-person filing) did not play well. The fact that some important developments still seem to be missing in the software did not make us happy campers either (address book anyone? configuration of pre-filled fields anyone?).

But the main issue is the following.

The new system only accepts a docx file for the text and drawings of the patent application. You may no longer upload pdf files. The docx file needs to comply with a number of requirements. If your file is not compliant, you get an error message. But most of the time the error message is so vague that it does not make it possible to immediately understand what is wrong with your file.

To me this is the most serious defect of the current Portail Brevets, as you can easily waste hours trying to figure out why the system does not like your docx file. 

The point of this blog post is not to criticize the INPI.

I am grateful for the efforts made by good people in the patent office working hard to modernize their tools and to provide patent applicants with the best level of service. I can also imagine that times must be stressful for the INPI too, as they are probably confronted with angry customers on a daily basis. 

No, my idea was rather to just provide a few tips based on my own experience as a newbie with the Portail Brevets, in case they may be of assistance to others. It would also be fantastic if readers could give some tips of their own in the comment section of this post. 

If you have had a problem filing via the Portail Brevets or if you have identified a potential trap, it is more than likely that other users will also encounter the same problem or fall into the identified trap. Thus why not contribute and help the entire community? 

In fact, if this appears to be useful in view of the comments, I will consider completing this post in the future to incorporate all relevant contributions into the body of the post, so as to provide a useful resource to all stakeholders. 

Note that most if not all of the issues should be avoided if you carefully read and digest the user’s documentation (here, here, here and there). But putting theory into practice is never an easy task, and I tend to think that a sort of practical troubleshooting description can always be useful.  

Season’s greetings.

So here we go with the difficulties / traps that I have identified so far: 

  • In the drawings section, you should type [Fig. 1] or the like, then a single paragraph break (“enter“), then immediately insert your drawing image. If there are several paragraph breaks, you will get an error message. 
  • In the description, you want to make the first reference to your drawing figures in an individualized manner, and the figure tag should be exactly at the beginning of a line. Thus, you should type: “[Fig. 1] shows …“; and then on the next line: “[Fig. 2] shows…“. You should not write “[Fig. 1] and [Fig. 2] show…“. Nor should you write “An embodiment of the invention is shown on [Fig. 1]“. And since we are actually talking about French language texts, you should not write “La [Fig. 1]…” either, because then the figure tag is not at the very beginning of the line. 
  • Beware of lists in MS Word. For instance, if you have a list with a), b), c) and if item c) comprises a list with bullet points, the bullet points will be automatically renumbered as d), e) etc. in the pdf file generated by the software. One way to avoid this is to keep only the first list and manually insert hyphens or like symbols for the second list. At any rate, you should carefully check all lists in the pdf file generated by the software. 
  • The same applies all the more so to lists in the claim section. Paragraph breaks (“enter“) should be avoided within a claim, and only line breaks (“shift + enter“) should be used. Otherwise, your claim numbering and count could be erroneous. 
  • If you insert an image into your document, and if the docx file is not approved by the system, you may try to convert the image to a different type before reinserting it.
  • A number of expressions are recognized as tags by the software, even though they are without square brackets. This means that they will be renamed and treated as section headings in the pdf file that is generated. The list of relevant expressions can be found in one of the documentation files linked to above. As a result, (1) if you use a slightly different wording, the expression will not be recognized and treated as a section heading; and (2) you cannot change the headings in the generated pdf file. For instance, if you type “Description détaillée“, your final heading will read “Description des modes de réalisation“.  Too bad if, like me, you tend to prefer “Description de modes de réalisation” (embodiments vs. the embodiments). 
  • If you use the MS Word upper case style, for instance for the title of the invention, the formatting is lost in the generated pdf. In other terms if you have typed “DeVicE” in your docx file but it reads “DEVICE” because of the upper case style, the pdf will nevertheless show “DeVicE“. It may therefore be best not to use the upper case style at all. 
  • As a warning, when you press the pay button, the application is filed. There is no “file application” button or the like. 

That’s all for the time being. If you cannot figure out where the error is in your docx file, it is possible to call the INPI for help and possibly send them the file by email so that they can look at it and advise you. But of course this process takes a little bit of time. 

Good luck everyone!

13 thoughts on “Nightmares before Christmas”

  1. “no more OLF, no more fax, no more in-person filing”, just docx?? Sorry if I misunderstood this, I am not a practitioner before the INPI, but: is this compliant with the PLT? Filing by paper should at least be accepted for the purposes of according a filing date (Article 5(1)(a) PLT) or for complying with a time limit (Article 8(1)(d) PLT), only then/later can the office may ask for an electronic version.

    1. You are right.

      As a matter of fact, i got a confirmation from the INPI that filing an application in person is still open whatever the application, to comply with the provisions or the PLT.

      However, filing a fax is accepted only if the portal has a problem. If you file a fax because of a problem that does notre come from the portal, you won’t get a filing date.

      1. That’s a very interesting point. Is there any official confirmation from the INPI in this respect? Looking at decision No. 2018-156 of the Director of the INPI which sets up the new system, the only mention of paper filing is for applications that are defense-sensitive. Also, this decision revoked prior decision No. 2014-141 which mentioned the possibility of a paper filing. Also, article R. 612-1 CPI provides that e-filing can be made mandatory if this facilitates examination / publication.

        1. No, the INPI does not communicate on this point. But I can tell you we paper-filed an application and got a filing date despite it was not sensitive. To be honest, the INPI refused to give us a filing date in the first place. We discussed this point on the phone and they finally changed their mind. I have a written confirmation from the filing department manager stating that a date has to be given due to the PLT, which explicitly recites the possibility of paper filing (art 5 as far as i remember).

      2. If INPI acknowledges that they have to comply with the PLT, you may point them to Art. 6(1) PLT, which prohibits formal requirements that are additional to, or different from, those set by the PCT (Art. 6(1) PLT, first bullet) with only two limited exceptions (scope for additional formal requirements) in the second and third bullet. So, any requirement that is not applied under the PCT is in principle forbidden under the PLT, e.g. also for national patent application irrespective of whether they are with priority or not. Though you may want to check with WIPO.

  2. I remember my first filing, I had one paragraph break between the [Fig 1] and the image, and the error message was something like “Internal server error”. Not easy to find the solution…

  3. 1. When trying to file a patent application, I received an error message saying that “the claims are not numbered”, although I had carefully used the automatic MS Word numbering. I removed the automatic numbering for all claims, and re-inserted it again, and hence hopefully got rid of the message…
    2. Unfortunately, I received a new error message “exception système”, which I did not find very helpful. After many attempts to solve the problem, I eventually found out that the system did not like the way I had inserted the drawings in the docx file. For your complete information, I had selected their outline in a pdf file and copied them in the docx file. I replaced them with a mere screenshot (which gave a very poor quality result), but allowed me to get rid of the “exception système” error message.

  4. I just can’t understand how the INPI has been able to come up with such a user-unfriendly filing app. There are excellent systems already developed by the EPO, and the INPI has come with something way worse from an applicant’s perspective. Question: with whose money…? I just can’t believe it. In the end, if patent law firms spend more time on filing a new application, applicants are likely going to pay the extra cost for such time. It is like if the INPI wished to have less filings before it !
    Luckily, I can use the EPO filing for most of my applications.

  5. To Hervé: I believe the new system has been introduced to save admin costs at the INPI (to recast the applications when filed in pdf). They ask us to do their admin job!!! We have no compensation, I will go to INPI with my yellow shirt 🙂

    To anybody: take EXTREME CARE when adding images (into description or claims). I did this with a filing requiring formulae. Instead of using the MSWord tool to create formulae, I copied them. In first attempts, I copied “Ctrl+C – Ctrl+V” from a pdf. The portal generated the pdf with success, but when looking at carefully, the last cm in the right part of the images was cut and placed on left part!!! Terrible error (loss of sufficiency, loss of priority… INPI was warned, but better to also inform everybody)
    Solution: “print screen” then “paste in MS Paint” then “select” then “copy” then paste in MS Word. It seems “Ctrl+C” and then “collage spécial – Image en mode point” works as well.

  6. An important point: filing a PDF is possible. This opportunity is offered by the portal only after uploading an incorrect docx.
    A regular docx has to be filed within 2 months from the filing, though.
    To be used whenever an application has to be filed very quickly.

  7. In during that time, Estonia joined the Federated Register, that is now constituted of 30 participating countries; where is France ? Sorry, because it not the topic, but so demoralized !

  8. This would definitely never, never, happen with EPO. This shows, once again, how INPI is far from being a professionnal and customer oriented office. As regards the PLT, the last decision does not fulfill the requirements of the PLT.

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