Filing Location

The applicant has several options for making a filing.

However, care must be taken to avoid jeopardizing the chances of obtaining a patent.

For initial filings

Filing with the EPO

This is what can be called a « direct filing. »

Article 75(1)(a) EPC provides that:

A European patent application may be filed:

a) either with the European Patent Office;

b) [… ]

Rule 35(1) EPC further provides that:

European patent applications may be filed in writing with the European Patent Office at Munich, The Hague or Berlin [… ]

Thus, even though the EPO has offices in other cities (such as Vienna or Brussels), only three locations can receive patent application filings (Rule 35(1) EPC):

• Munich (EPO),
• The Hague (EPO Department),
• Berlin (EPO Branch).

The offices in Vienna or Brussels cannot receive any filings (Guidelines A-II 1.1).

It should be noted that the offices in Berlin and Munich are equipped with automatic mailboxes that can be used at any time of day or night (« Decision of the President of the European Patent Office, dated 3 January 2017, concerning the designation of EPO filing offices« , OJ 2017, A11).

Caution! What has just been said does not mean that direct filing is the only option or that it is always possible.

Filing with a national receiving office

The option

A75(1) b) EPC provides that:

A European patent application may be filed:

a) [… ]

b) or, if the law of a Contracting State so permits, and subject to Article 76(1), with the central industrial property service or other competent authorities of that State. Any application so filed shall have the same effect as if it had been filed on the same date with the European Patent Office.

Where such a filing is possible and the application is received via a national office, the filing date corresponds to the date on which the national office received the documents. The EPC does not in any case allow for the application of national law to determine the filing date of a European patent application (J 18/86).

« if the law of a Contracting State so permits« : it is necessary to check the legislation of each State to determine whether this is possible.

In this case, it is possible in France. Indeed, Article L614-2 IPC provides that:

Any European patent application may be filed with the INPI, either at its headquarters or, where necessary, at its regional centers, in accordance with the procedures specified by regulation.

As of the latest information, it was possible to file a patent application in any language in all Contracting States except for (National law relating to the EPC, Table II):

• Cyprus
  • filing only in English, German, French, and Greek.
  • A translation into Greek must be submitted within 2 months if the description is not in Greek;
• Greece
  • filing in any language,
  • A translation into Greek must be submitted within 2 months if the description is not in Greek;
• Spain
  • filing only in English, German, French, and Spanish,
  • A translation into Spanish must be submitted at the same time if the description is not in Spanish;
• Bulgaria
  • filing only in English, German, French, and Bulgarian;
• Former Yugoslav Republic of Macedonia
  • filing only in English, German, French, and Macedonian;
• Norway
  • filing only in English, German, French, and Norwegian;
• Italy
  • filing in any language,
  • A translation into Italian must be submitted at the same time if the application is not in Italian, unless priority is claimed from an application filed in Italy more than 90 days earlier or if the applicant is not domiciled in Italy;
• Portugal
  • filing in any language,
  • A translation into Portuguese must be submitted within 1 month if the application is not in Portuguese, unless priority is claimed from an application filed in Portugal;
• Poland
  • filing in any language,
  • A translation into Polish must be submitted at the same time if the application is not in Polish.

Additionally, it is necessary to draft « the indication that a patent is sought » and « the indications allowing the identification of the applicant« :

• in English, German, French or Danish for Denmark;
• in English, German, French or Hungarian for Hungary;
• in English, German, French or Finnish for Finland;
• in English, German, French or Portuguese for Portugal;
• in English or Maltese for Malta.

The obligation

While the EPC allows for a filing with a national authority, it also provides that national legislators may make this option mandatory in certain cases (A75(2) EPC).

In France, the legislator has drafted the second paragraph of Article L614-2 CPI as follows (yes! Even though this is French national law, I believe it is important to detail this point here):

The filing must be made with the Institut national de la propriété industrielle where the applicant has their domicile or registered office in France and does not claim the priority of an earlier filing in France.

The purpose of such a measure is to allow the Minister responsible for defense to classify certain inventions as secret if they are considered sensitive or important for national defense.

In short, there is an obligation to file a European patent application with the INPI if:

• the applicant has their domicile/registered office in France.
• the application does not claim priority of an application that was filed in France.

The priority-related condition

First, this obligation is subject to the fact that the patent application does not claim the priority of an earlier filing in France.

Thus, it is not necessary to file with the INPI if you claim priority from a first French, European, or international application (which normally should have been filed in France, as provided by the Industrial Property Code).

Nevertheless, some questions remain unanswered here:

1. What happens if one claims a priority that has « nothing to do » with the invention to avoid this obligation? I believe one could still be sanctioned for « fraud on the law« . Indeed, such behavior is quite clearly an attempt to circumvent the law to produce effects that the legislator did not intend.
2. What happens if additional subject matter (e.g., an improvement of the invention) is added between the priority application and the application claiming that priority? This is not entirely clear… Personally, I would advise requesting prior authorization (an authorization that we will describe below) to protect yourself and avoid any surprises.
3. What happens if the application claims a U.S. priority? According to the letter of the law, the patent application claiming such priority should be filed with the INPI. In my view, this procedure is then entirely meaningless (even though it remains mandatory). Indeed, the purpose of the filing procedure in France is to allow the Minister responsible for defense to classify inventions relevant to national defense as secret. If a foreign power already has knowledge of the invention due to a filing in another country or if the foreign patent application is likely to be published, this procedure no longer makes sense since the classification would serve no purpose… but that’s just the way it is 🙂

If I were to rewrite this paragraph, I would probably draft it as follows to try to clarify matters: « The application must be filed with the Institut national de la propriété industrielle where the applicant has their domicile or registered office in France and does not validly claim the priority of an earlier filing for the entire application in France. »

The domicile-related condition

Finally, this obligation is subject to the fact that the applicant is domiciled or has its registered office in France.

But does this mean that there is no obligation to file in France:

• when the inventor is French?
• when the applicant is French and does not have a registered office in France?

Under the French Industrial Property Code, this appears to be the case.

Nevertheless, it should not be forgotten that:

• other French codes remain applicable even when we are discussing patents;
• not all positive law is found in the codes.

First, Article L411-6 of the French Penal Code provides:

The act of delivering or making accessible to a foreign power, to a foreign enterprise or organization or one under foreign control, or to their agents, information, processes, objects, documents, computerized data or files, the exploitation, disclosure or compilation of which is likely to harm the fundamental interests of the nation, is punishable by fifteen years’ criminal imprisonment and a fine of 225,000 euros.

As you can see, this article of the Penal Code does not require French nationals (inventors or applicants) to file their patent applications with the INPI, but it warns them against disclosing information « likely to harm the fundamental interests of the nation. » But how can one know whether such a situation exists?

The interministerial instruction 9062/DN/CAB of 13 February 1973 specifies the procedure for determining whether an invention is of interest to national defense: the prior authorization procedure.

The request for authorization must be submitted to the Ministry responsible for national defense, the ministerial delegation for armaments, patents and inventions bureau. This request for authorization must be accompanied by the description and drawings and include the statement of the claims.

Sanction

The sanction for violating the provisions of Article L614-2 CPI is set out in Article L615-16 CPI.

Anyone who knowingly infringes one of the obligations or prohibitions set out in the second paragraph of Article L. 614-2 […] shall be liable to a fine of 6,000 euros. If the infringement has prejudiced national defense, a prison sentence of five years may also be imposed.

In addition, the above-mentioned criminal sanction is provided for in Article L411-6 of the French Penal Code:

The act of delivering or making accessible to a foreign power, to a foreign enterprise or organization or one under foreign control, or to their agents, information, processes, objects, documents, computerized data or files, the exploitation, disclosure or compilation of which is likely to harm the fundamental interests of the nation, is punishable by fifteen years’ criminal imprisonment and a fine of 225,000 euros.

Secrecy order

As we have just seen, it is possible for a Member State to impose a secrecy order on a patent application for a defined period of time.

Thus, the application will not be transmitted to the EPO (A77(2) EPC):

Any European patent application the subject-matter of which has been placed under a secrecy order shall not be transmitted to the European Patent Office

If this application is still not transmitted to the EPO within a period of 14 months (from the priority date), it shall be deemed to be withdrawn (A77(3) EPC and R37(2) EPC).

Case of non-transmission within the prescribed time limit

Example

It has occurred that the national office inadvertently failed to transmit the filing to the EPO within the time limits. In this case, the applicant cannot request the re-establishment of rights (in other words, they cannot pursue either further processing or restitutio in integrum) given that the EPC provides for re-establishment of rights only where there has been a failure to observe a time limit that the applicant was responsible for meeting
(J03/80).

Legal consequence: application deemed withdrawn

The application is deemed withdrawn (A77(3) EPC) if the national office fails to transmit the European application (R37(1) b) EPC):

• within a period of 4 months from the filing date, or
• if priority has been claimed, within 14 months from the priority date.

Solution: transformation procedure

In this scenario, the applicant has only one legal remedy: the transformation of the European application into a national application (A135(1) a) EPC).

The request for transformation must be submitted to the central industrial property service with which the European patent application was filed (A135(2) EPC).

Subject to provisions relating to national defense, this service transmits the request directly to the central services of the contracting states designated therein (A135(2) EPC). A copy of the file is attached (R155(2) EPC).

The request for transformation must be submitted within a time limit (R155(1) EPC) of 3 months from the notification indicating that the application is deemed withdrawn.

If the request is not submitted within the time limits, the application ceases to have the effect of a regular national filing (R155(1) EPC): the legal remedies under national law must then be considered.

The request must be transmitted to the central offices of the contracting states within a period of 20 months from the filing date or the priority date (R155(3) EPC).

If the request is not transmitted within the time limits, the application ceases to have the effect of a regular national filing (A135(4) EPC).

Other cases (deemed withdrawn, rejected, withdrawn, revoked)

Certain national legislations may provide that transformation is possible under condition if the application is deemed withdrawn, rejected or withdrawn, or if the patent is revoked (A135(1) b) EPC).

A transformation is possible:

• if the application is deemed withdrawn for failure to file a translation of the application in the language of the proceedings (A90(3) EPC: formalities examination of the filing):
  • Bulgaria;
  • Cyprus;
  • Croatia;
  • Spain;
  • Former Yugoslav Republic of Macedonia;
  • Finland;
  • Greece;
  • Lithuania;
  • Malta;
  • Portugal;
  • Romania;
  • Slovenia;
• Other cases:
  • Estonia: if the application is deemed withdrawn (A90(3) EPC: formalities examination of the filing);
  • Hungary:
    • if the application is deemed withdrawn for failure to file a translation of the application in the language of the proceedings (A90(3) EPC: formalities examination of the filing) or
    • if the application is deemed withdrawn for failure to pay the search or filing official fee (A78(2) EPC);
  • Italy: (utility model) if the application is deemed withdrawn, rejected or the patent revoked;
  • Latvia: if the application is deemed withdrawn (A90(3) EPC: formalities examination of the filing);
  • Poland: if the application is withdrawn or rejected;
  • Slovakia: if the application is withdrawn, deemed withdrawn or refused, or the patent is revoked;
  • Switzerland: if the application is deemed withdrawn for failure to file a translation of the application in the language of the proceedings (A90(3) EPC: formalities examination of the filing) for applications filed in Italian only;

In France, no provision allows for the transformation of an application outside the cases previously mentioned (L614-6 IPC), i.e., the case referred to in A77(3) EPC where the national office does not transmit the European application within the time limit.

In such cases, the request for conversion must be filed with the EPO (A135(3) EPC).

It is only deemed to have been filed after payment of the conversion fee (A135(3) EPC): [montant_epo default= »70 € » name= »A2(1).14 RFees »] (A2(1).14 RFees). If the fee is missing, the EPO informs the requester that the fee must be paid (Guidelines A-IV 6).

The request for conversion must be filed within a period of 3 months (R155(1) EPC) from:

• the notification indicating that the application is deemed to be withdrawn, that the application is refused or that the patent is revoked; or
• the withdrawal of the application.

The A121 EPC is applicable to the applicant.

The A122 EPC is applicable to the proprietor.

If the request is not filed or if the fee is not paid within the time limits, the application shall cease to have the effect of a regular national filing (R155(1) EPC).

The EPO transmits the request to the central industrial property offices of the contracting states indicated in the request (A135(3) EPC) and attaches a copy of the application file (R155(2) EPC).

A contracting state may not impose formal requirements for the request other than those of the Convention (A137(1) EPC), but may require, within a period of no less than 2 months, that (A137(2) EPC):

• the national filing official fee be paid;
• a translation be provided in an official language of that state:
  • of the initial application;
  • of the latest amended version before the EPO (if the applicant wishes to proceed with it).

For divisional applications

Unlike « standard » applications, divisional applications may only be filed with the EPO (A76(1) EPC):

• The Hague;
• Munich;
• Berlin.

No filing with a national office is possible (A75(1)(b) EPC together with A76(1) EPC together with R36(2) EPC). If, as a courtesy, a national office were to receive a divisional application and forward it to the EPO, that divisional application would be deemed to have been received on the date of receipt of the documents by the EPO (Guidelines A-II 1.1 and Guidelines A-IV 1.3.1 for divisional applications).