Place of deposit

The applicant has several possibilities to make a deposit.

However, it must be ensured that it will not do anything and thus jeopardize its chances of obtaining a patent.

See the latest changes

Chapter 1. For initial deposits

Section 1.1. Filing with the EPO

This is what we can call " direct deposit ».

TheA75 (1) (a) EPC provides that:

The European patent application may be filed:

(a) with theEuropean Patent Office ;

b) [...]

The R35 (1) EPC as for it:

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

Thus, even if the EPO has buildings in other cities (such as Vienna or Brussels), only three locations can receive patent filings (R35 (1) EPC):

  • Munich (EPO)
  • The Hague (Department of the EPO),
  • Berlin (Agency of the EPO)
The three receiving European Offices
The three receiving European Offices

The agency Vienna or Brussels can not receive anything (Guidelines A-II 1.1).

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

Warning ! Indeed, what has just been said does not mean that the direct deposit is the only one or that it is always possible.

Section 1.2. Filing with a receiving national office

1.2.1. Faculty

TheA75 (1) (b) EPC provides that:

The European patent application may be filed:

at) [… ]

(b) where permitted by the law of a Contracting State and subject to Article 76 (1), the central industrial property office or other competent authorities of that State. Any application filed in this way shall have the same effect as if it had been lodged at the same date with the European Patent Office.

Where filing is possible and the application is received through a national Office, the filing date is the date on which the national Office received the documents. The EPC does not accept the possibility of applying a decision of national law to determine the filing date of a European patent application (J 18/86).

'Si the law of a Contracting State so permits It is necessary to look in the legislation of each state to know if this is possible.

In this case, this is possible in France. Indeed, the article L614-2 CPI has:

Any European patent application may be filed with National Institute of Industrial Property either to his seat, as necessary, in its regional centers, according to procedures that are specified by regulation.

At the latest news it was possible to file a patent application in any language in all Contracting States except for (National Law on the EPC, Table II):

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

In addition, it is necessary to write " the indication that a patent is sought »And« indications to identify the applicant »:

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

1.2.2. The obligation

But if the EPC allows a deposit in a national administration, it also provides that the national legislator makes this option mandatory in certain cases (A75 (2) EPC).

In France, the legislator drafted the second paragraph of the article L614-2 CPI as follows (yes, even if it is French national law, it seems important to detail this point here):

The demand must be filed at the National Institute of Industrial Property, when the applicant is domiciled or headquartered in France and does not claim the priority of a prior deposit in France.

The purpose of such a measure is to allow the Minister of Defense to keep certain inventions secret if he considers that they may be sensitive or important for the defense of the nation.

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

  • the depositor has his domicile / head office in French.
  • the request does not claim priority an application having been lodged in la France.
1) The priority condition

First of all, 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 make a deposit with the INPI if you claim a first application French, European or international (which normally had to be filed in France, as provided by the code of industrial property).

Nevertheless, some questions remain unresolved here:

  1. What happens if you claim a priority that does not have nothing to see To avoid this obligation? I think we could still be punished for " law fraud ". Indeed, this behavior is quite clearly a circumvention of the law to make it produce effects that the legislator did not wish.
  2. What happens if we add material (eg improvement of the invention) between the priority demand and the demand claiming this priority? It is not very clear ... Personally, I would advise you to ask for a prior authorization (authorization that we will describe below) to protect you and avoid any surprises.
  3. What happens if the claim claims a US priority? According to the letter of the law, it would be necessary to file the patent application claiming this priority before the INPI. In my opinion, this procedure is then completely meaningless (even if it remains mandatory). Indeed, the purpose of the filing procedure in France is to allow the Minister in charge of defense to secrecy inventions relevant to national defense. If a foreign power is already aware of the fact of a filing in another country or if the foreign patent application is likely to be published, this procedure does not make any sense since putting under secrecy would be useless ... but hey it's like that 🙂

If I were to rewrite this paragraph, I will probably write it as follows to try to clarify things: " The demand must be filed the National Institute of Industrial Property, where the applicant is domiciled or headquartered in France and that he does not claim validly not the priority of an earlier filing for the entire application in France. "

2) The home condition

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

But does this mean that there is no deposit requirement in France:

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

With regard to the industrial property code, this seems to be the case.

Nevertheless, we must not forget that:

  • the other French codes remain applicable even if we speak of patents;
  • all the positive right is not in the codes.

First, the article L411-6 of the Penal Code has:

Delivering or making available to a foreign power, foreign or foreign-controlled enterprise or organization or their agents information, processes, objects, documents, computer data or files the operation, disclosure or meeting of which is of a nature to affect the fundamental interests of the is punished by fifteen years of criminal detention and a 225,000 euro fine.

As you can see, this article of the Penal Code does not oblige the French (inventors or depositors) to file their patent applications with the INPI, but warns them against disclosure of information " of a nature to affect the fundamental interests of the ». But how do we know if we are in such a situation?

Theinterdepartmental instruction 9062 / DN / CAB of February 13, 1973 specifies the procedure to know if an invention interests the national defense: the prior authorization procedure.

The request for authorization must be made to the Ministry of National Defense, Ministerial Delegation for the Armament Office of Patents and Inventions. This application for authorization must be accompanied by the specification and the drawings and include the statement of claims.

3) Sanction

Penalty for violation of the provisions of Article L614-2 CPI is provided for in Article L615-16 CPI.

Anyone who knowingly violates one of the obligations or prohibitions provided for in the second paragraph of Article L. 614-2 [...] will be punished by a fine of 6,000 euros. If the violation has prejudiced the national defense, a five years imprisonment may also be pronounced.

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

Delivering or making available to a foreign power, foreign or foreign-controlled enterprise or organization or their agents information, processes, objects, documents, computer data or files the operation, disclosure or meeting of which is likely to undermine the fundamental interests of the nation is punished by fifteen years of detention criminal and € 225,000 fine.

1.2.3. The secrecy

As we have just seen, it is possible for a Member State to secretly apply for a patent for a period of time to be defined.

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

Any European patent application whose subject has been kept secret is not sent to the European Patent Office

If this request is still not sent to the EPO within 14 months (from the priority), the latter is deemed withdrawn (A77 (3) EPC and R37 (2) EPC).

1.2.4. Case of non-transmission within the prescribed period

1) Example

In some cases, the national office mistakenly failed to forward the application to the EPO within the time limit. In this case, the applicant can not ask for the reinstatement of his rights (in other words, he can not proceed with a prosecution or restitutio in integrum) since the EPC provides for the reinstatement of rights only when there is failure to comply with a time limit which it was for the applicant to
(J03 / 80) .

(2) Legal consequence: application deemed withdrawn

The request is deemed withdrawn (A77 (3) EPC) if the national office does not transmit the European application (R37 (1) (b) EPC):

  • in a delay of 4 months from their deposit or,
  • if a priority has been claimed, 14 months from the priority date.
3) Solution: transformation procedure

In this case, the plaintiff has only one legal remedy: the transformation of demand in national application (A135 (1) (a) EPC).

In this case, the request for conversion must be submitted to the national central industrial property office to which the European patent application was filed (A135 (2) EPC).

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

The request for conversion must be submitted within aR155 (1) EPC) of 3 months from the notification that the request is deemed withdrawn.

If the request is not filed on time, the application ceases to have the value of a regular national filing (R155 (1) EPC): it is then necessary to look at the legal remedies in the national legislation.

Transmission of the request must be made to the Central Offices of the Contracting States within 20 months from the filing date or the priority date (R155 (3) EPC).

If the request is not submitted on time, the application ceases to have the value of a regular national filing (A135 (4) EPC).

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

Some national laws may provide that processing may be conditional if the application is deemed to be withdrawn, rejected, withdrawn, or the patent revoked (A135 (1) (b) EPC).

A transformation is possible:

  • if the request is deemed withdrawn for failure to produce a translation of the application into the language of the proceedings (A90 (3) EPC : form examination of the deposit):
  • Other cases :
    • Estonia if the application is deemed to be withdrawn (A90 (3) EPC : form examination of the deposit);
    • Hungary :
      • if the application is deemed withdrawn for non-production of a translation of the application into the language of the proceedings (A90 (3) EPC : form examination of the deposit) or
      • if the application is deemed withdrawn for non-payment of the search or filing fee (A78 (2) EPC);
    • Italy : (utility model) if the application is deemed withdrawn, rejected or the patent revoked;
    • Latvia if the application is deemed to be withdrawn (A90 (3) EPC : form examination of the deposit);
    • Poland : if the application is withdrawn or rejected;
    • Slovakia : if the application is withdrawn, deemed withdrawn or refused, or the patent is revoked;
    • Swiss : if the application is deemed withdrawn for non-production of a translation of the application into the language of the proceedings (A90 (3) EPC : formal examination of the filing) for applications filed in Italian only;

In France, no provision makes it possible to transform a demand outside the previously seen case (L614-6 CPI), ie the case referred toA77 (3) EPC in which the national office does not forward the European application in time.

In these cases, the request for conversion must be submitted to the EPO (A135 (3) EPC).

It is deemed to be presented only after payment of the conversion fee (A135 (3) EPC): 75 € (A2 (1) .14 RRT). If the fee is missing, the EPO informs the applicant that the fee must be paid (Directives A-IV 6).

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

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

TheA121 EPC is applicable to the applicant.

TheA122 EPC is applicable to the holder.

If the application is not submitted or if the fee is not paid in due time, the application ceases to have the value of a regular national filing (R155 (1) EPC).

The EPO transmits the request to the Central Offices of the Contracting States mentioned in the request (A135 (3) EPC) and attach a copy of the application file (R155 (2) EPC).

A Contracting State may not impose conditions of form other than those of the Convention (A137 (1) EPC), but may require, in a time not less than 2 months than (A137 (2) EPC):

  • the national filing fee is paid;
  • a translation is provided in an official language of that State:
    • the initial request;
    • of the last amended version before the EPO (if the applicant wishes to continue with).

Chapter 2. For divisional applications

Unlike "classic" applications, divisional applications can only be filed with the EPO (A76 (1) EPC):

  • The Hague ;
  • Munich;
  • Berlin.

No deposit with a national office is possible (A75 (1) (b) EPC together A76 (1) EPC together R36 (2) EPC). If, by kindness, a national Office receives a divisional application and transmits it to the EPO, this 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 Directives A-IV 1.3.1 for divisionals).

One Comment:

  1. Does an application for a patent filed by an individual, which is of national defense interest (and therefore incommunicado), give rise to an indemnity? In case of disagreement on the amount of the latter, is it possible to seize a court competent in the matter?
    I remain attentive to your observations.

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