It is that time of year again when wishes are made for the twelve months to come. Beyond the obvious but sincere wishes of peace, health and happiness which are hereby expressed to all readers of this blog, many of us certainly have a number of IP-oriented wishes as well.
One wish in particular was repeatedly uttered during the latest general assembly of the CNCPI (the French patent attorney bar), including by our newly elected chairwoman: that the relationship between the patent attorney profession and the INPI (the French patent and trademark office) should improve. A reasonable desire indeed.
There are many issues that come into play in this respect.
One which I guess should theoretically be quite easy to address is official communication from the INPI to patent attorneys – and all other stakeholders for that matter.
By way of example, I have recently come across a new version of the INPI patent guidelines by chance. Unless I missed something – which of course is very possible – I am not sure any communication has been made on this topic. As far as I know, the previous version of the guidelines was dated 2012.
As it seems to me that the issuance of new guidelines can be of interest to readers, here is a brief report on what I have found out.
The new guidelines are apparently divided into three parts:
- One part entitled “Grant proceedings“, dated May 2016.
- Another part entitled “Other proceedings“, dated May 2016.
- And another part entitled “Recordals on registers and official copies“, dated December 2016.
The first part and the second part correspond to the previous guidelines which used to be in a single part. As for the third part, it seems to be entirely new.
The first part encompasses the filing, examination, publication, refusal, withdrawal or grant of patent applications. The second part addresses renewal fees, fee reductions, validity opinions, supplementary protection certificates (SPCs) and public inspection of files.
As the INPI did not issue any comment as to which modifications were made in the guidelines, I performed a quick side-by-side comparison on my own. The underwhelming conclusion is that extremely little has changed, except the layout.
The main change that I have identified relates to filing practices: in-person filing must be made in Paris only (and no longer in regional offices), the sole fax number that applicants are supposed to use has changed, and e-filing possibilities have been extended further to the implementation of the INPI’s own web-based system next to the EPO-originating filing system, which is still active.
Other than that, the content of parts one and two looks almost identical to the content of the 2012 guidelines. In particular, the section on limitation proceedings is still marked as “to be published” – although it has now been eight and a half years since limitation proceedings were introduced into French law.
One of my favorite clichés is the Sherlock Holmes one of the dog that did not bark.
And, to some extent, what has not changed in the guidelines is quite interesting.
For instance, in section C-VII-1.6 on patentability of computer programs, it is first recalled that computer programs “as such” are not patentable inventions. But then come the two following paragraphs:
If a computer program is capable of producing, when it is implemented on a computer, a supplementary technical effect which goes beyond […] normal technical effects which consist in making the computer work, it is not excluded from patentability.
Such a technical effect which may impart technical character to a computer program can reside, for instance, in the command of an industrial process, in the processing of data representing physical entities or in the internal functioning of the computer itself or of its interfaces under the influence of the program. It can, for instance, impact the efficiency or security of a process, or the management of necessary computer resources, or else the rate of data transfer in a communication link making it possible to solve a technical problem.
This was likely adapted from what has now become section G-II, 3.6 of the EPO guidelines for examination.
Two paragraphs down, the following is added:
In such cases, the following formulations are accepted:
– A computer program comprising portions / means / program code instructions for implementing the steps of the process according to claim X when the program is implemented on a computer.
– A computer program product comprising portions / means / program code instructions stored on a support usable in a computer, comprising: computer-readable programming means for performing step A, computer-readable programming means for performing step B, computer-readable programming means for performing step C, when the program runs on a computer.
Again, nothing out of the ordinary here for most European practitioners.
What can be surprising though, is the confrontation of these rules contained in the May 2016 guidelines and some statements contained in the 2015 ruling by the Paris Tribunal de grande instance in the Orange v. Free litigation.
It is my understanding that the court’s position in Orange was that all software claims are unpatentable, regardless of how technical or non-technical the software is. The court even openly criticized the grant of software patents by the EPO in the following terms:
It cannot be validly argued, as the sole defense to deny nullity of these two claims, that the practice of the EPO is to admit claims to programs for computers by calling them ‘program-products’.
In fact, it cannot be accepted that a mere trick of language would make it possible to grant patents contra legem. Indeed, the grant of patents to computer programs, even if they are called program products, is not supported by any statute or by any difficulty of interpretation of the EPC, and on the contrary those are clearly excluded as such from patentability.
Therefore, one is led to believe that the Orange v. Free case law has not been endorsed by the INPI and that the patent office’s practice regarding computer-implemented inventions remains the same. Good news for software applicants!
By the way, an appeal is still pending in Orange v. Free, but the computer program claims have now been deleted from the patent in suit, as reported in a previous post. Therefore, the Cour d’appel is very unlikely to revisit this issue in its future decision.
A second striking example of what has not changed in the guidelines is the section on SPCs. SPCs are probably one of the most challenging and moving areas of patent law. Almost every year, there are several rulings by the CJEU which have practical repercussions on SPC practice. Yet, no new reference to CJEU case law has been added to the guidelines, so that the most recent CJEU case referred to in the guidelines is still C‑482/07 (AHP Manufacturing) of September 3, 2009.
By way of anecdote, it is also mentioned in this section that there are 27 member states in the EU. Too bad for Croatia, which became the 28th member state in 2013. Well, maybe that part does not need to be amended after all, as there will soon be 27 member states again anyway.
On the other hand, the part of the guidelines which is definitely up to date is the third one, as it is entirely new. It deals with all registers, that is not only the patent national register but also the trademark and design registers, as well as less commonly used registers, such as the software register or the semi-conductor product topography register.
In fact the award for the most exotic (and, I must admit as far as I am concerned, unheard of) register goes to… the register for industrial and commercial awards, which was set up by a law dated August 8, 1912.
Anyway, this new part is a valuable addition to the previous guidelines. It is certainly useful for all users of the system to have a single document handy where all relevant legal bases are quoted and summarized.
As a side note, the legal bases mentioned in the third part of the guidelines include those on the once controversial SVA-SVR law. SVA stands for “silence vaut acceptation” (“silence means acceptation“) and SVR stands for “silence vaut rejet” (“silence means refusal“). This recent law gave rise to a number of practical concerns, which finally led to its partial cancellation by the Conseil d’Etat (the administrative supreme court). However, some SVA-SVR principles remain applicable to the INPI.
Until those are properly taken into account in the first and second parts of the guidelines, I think the notice issued by the INPI in April 2016 should still be useful.
Again, best wishes to all for 2017, including the INPI!