Subject-matter which extends beyond the content of the application as filed

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Chapter 1. Principle

Once the application is filed, the scope of the invention is fixed.

If, at a later date, the proprietor seeks to modify his claims to cover a "new invention" which he had not thought of during the filing (eg a product of a competitor close to his invention), it is normal to refuse him change

During the examination of the applicationit's the article L612-12 CPI 8 ° which applies ("Is denied, in whole or in part, any patent application ... whose claims are not based on the description“).

However, after deliveryit is funny (well ... it depends on his humor!) to note that the wording of the ban is no longer identical at all (and adopting the European wording, L613-25 CPI c) "The patent is declared invalid by a court decision ... if its purpose extends beyond the content of the application as filed“).

Chapter 2. Before Grant: Basis of the Claims on the Description

If the claims are not based on the description, this may mean:

  • that at the time of filing, the applicant has forgotten hissupport"
  • during the examination, the applicant sought to modify his claims in an unsupported manner.

If the second case results in a certain rejection of the request, in the second case (ie forgetting the support) the INPI will ask you to correct the description via a hardware error correction (R612-36 CPI): a fee will be payable.

Chapter 3. After delivery: content of the application as filed

Section 3.1. The description

The content of the description is of course part of the application as filed (ex. Paris District Court, 3rd Division, 3rd Sect., June 27, 2000 or Court of Appeal of Paris, Pole 5, 2nd ch. December 20, 2013, RG No. 2012/14147).

Section 3.2. The claims as filed

The claims are also part of the application as filed (Court of Appeal of Paris, Pole 5, 2nd ch. December 20, 2013, RG No. 2012/14147).

Indeed, the fact for a claim not to be supported by the description is not a problem after delivery (Paris District Court, 3rd Division, 3rd Sect., April 30, 2002): indeed, by the term "request" , one should understand"description and claims” (Paris District Court, 3rd Division, 3rd Sect., June 27, 2000), at least.

Section 3.3. The drawings ?

In general, the French judge is reluctant to use the drawings for the application of this article:

Indeed, the drawings can not "compensate for the absence of the description” (C. Cass. com., December 3, 1969).

I do not share this opinion because the terminology of the article L613-25 CPI c) is clear: we are talking about "request"And the drawings are part of it, according to my analysis.

It should be noted that some decisions explicitly mention drawings as usable (Paris District Court, 3rd Division, 3rd Sect., January 9, 2008).

Nevertheless (and a bit like in the European jurisprudence), it seems possible to use the dimensions determined with the help of the figures (ex.the size of a connecting rod is x cm” , C. Cass. com. May 26, 1964) if :

  • it is stated in the application that this dimension is important;
  • the figures are not schematic and have, for example, dimensions.

Chapter 4. Extension Analysis

Section 4.1. Principle

There is an extension of the request if the modification does not follow directly and without ambiguity information contained in the application as filed, taking into account the general knowledge of the person skilled in the art (Court of Appeal of Paris, Pole 5, 2nd ch. December 20, 2013, RG No. 2012/14147).

This approach is common with that of the EPO.

In particular, this test is not an obvious test (Paris District Court, 3rd Division, 3rd Sect., January 9, 2008): thus, the patentee can not add elements that would have simply beenevident"To the person skilled in the art upon reading the request.

It is not necessary to do a word-by-word review of the description (eg "safety valve" replaced by "automatic check valve” , Court of Appeal of Paris, 4th ch., 4th section, March 27, 2002) as long as the change has the same technical meaning as the original disclosure.

Section 4.2. Addition of a characteristic

An extension of the application as filed does not compare with the restrictiveness of the feature added to the claims, but with respect to the object disclosed in the original application (Paris District Court, May 7, 2014).

Thus the addition of a characteristic (ie a limitation of the subject of the claims) may nevertheless be an extension of the content (Court of Appeal of Paris, Pole 5, 2nd ch. December 20, 2013, RG No. 2012/14147).

Section 4.3. Deleting a characteristic

The deletion of a characteristic of an independent claim may be an extension (Court of Appeal of Paris, 4th ch., Sect. A, 31 January 2007, RG No. 2005/22227)

  • if this characteristic is presented as essential to the invention and
  • if it is indispensable for its realization, in view of the technical problem that it proposes to solve.

If an object is claimed in such a way less accurate what is described is an extension of the scope (Paris District Court, 3rd Chamber 2nd Section, 3 October 2014, RG No. 10/10179).

Section 4.4. Intermediate generalization

Incorporating only some of the features of a dependent claim into the associated independent claim may be an extension of the content as filed (Court of Appeal of Paris, Pole 5, 2nd chapter, May 16, 2014) especially if one skilled in the art could not see that there was a decorrelation between the characteristics of the dependent claim.

The content of the application should not be considered as a reservoir from which it will be possible to combine characteristics in order to artificially create a particular combination (Paris District Court, 3rd Division, 3rd Sect., January 9, 2008).

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