Divisional applications

Divisional applications

A divisional application (daughter application) is a patent application that originates in another prior patent application (parent application).

The effects of division

Profit from previous filing date

Division of a French patent application makes it possible to file a patent application benefiting from the filing date of another French application, ie the "mother" demand (L612-4 CPIparagraph 2).

Constitution of the file

At division, the file of the divisional application is constituted by the file of the previous application (R612-35 CPIparagraph 3).

Nevertheless, if the divisional application is restricted, only the "restricted" description will be accessible in this file (R612-35 CPIparagraph 3).

The usefulness of divisional applications

The division is useful mainly in the event that one of your requests contains several inventions and that Examiner raised a " lack of unity of invention »(L612-4 CPI, paragraph 2): some inventions had to be abandoned so that the examination could continue, but for all that, you want to protect these inventions.

The filing of a divisional application is appropriate in this situation.

Condition for dividing a patent application

The substantive conditions

Description and drawings

In a split, two options are open to the applicant (R612-35 CPIparagraph 2):

  • the description and the drawings are identical (the claims can then be modified to restrict themselves to an object);
  • limiting the description and the drawings to the part of the invention covered by the new claims.

Thus, it is not possible to add any content to the request.

claims

The claims must always be supported by the description (L612-6 CPIsecond sentence).

Form requirements

Types of mother request

Any French request can be divided.

An application for a utility certificate born can not to be divided into a patent application (INPI Examination Guidelines, IB III.2): only a division into a certificate of utility is possible.

Divisional applications of first generation or later generations
Divisional applications of first generation or later generations

As the previous diagram shows, it is quite possible (INPI Examination Guidelines, IB III):

  • of divide several times the same request;
  • or to realize chain divisions.

Pending mother application

With regard to the letter of L612-4 CPI, R612-34 CPI and R612-35 CPIonly one patent application (ie pending) can be divided.

Thus, it seems possible to divide:

  • if a delay has not been respected :
    • until the expiry of the period in question, because recourse to restoration does not have suspensive effect (INPI Examination GuidelinesIE 3.3.1 d)),
    • unless the restoration succeeds;
  • if a request is rejected or declared inadmissible :
    • until the expiry of the time limit for bringing500 CPC, 1 month according to R411-20 CPI) if no appeal is filed;
    • until the end of the appeal if an appeal to a Court of Appeal isL411-4 CPI, paragraph (2) because of the suspensive effect of the latter (general principle of 539 CPC, confirmed by INPI Examination Guidelines, IE 3.3.1 d)).
  • if a deadline of annual fee on a request not paid, two schools clash (and frankly, I can not decide):
    • the division is only possible until the normal payment of the annual fee (L613-22 CPIsecond paragraph, Forfeiture takes effect on the date of expiry of the annual royalty unpaid");
    • either the division is possible as long as the director of the INPI has not noted the forfeiture of rights in a notification (because even if the lapse is retroactive, the decision of the director can not affect an irrevocably acquired situation during the division , analogy with C. Cass, ch com., n °10-24326).
  • if the request is took ofe:
    • before the INPI receives all the necessary documents for the withdrawal (declaration, possible powers, etc.) since it is at this date that the withdrawal is effective and irrevocable (INPI Examination Guidelines, IF);
    • at first, a division the same day seems impossible (but I have no case law);
  • if the INPI decides to issue a patenta division is possible until payment of the fee for the issue and printing of the patent specification (R612-35 CPI).

Mother request to consider

Voluntary division

In the hypothesis of a cascade division (ie A is divided into B, and B is divided into C), to check if the parent request of C is pending (see previous conditions), it is necessary to look at the request A (INPI Examination Guidelines, IB III.2).

Cascade Division and Mother Application to Consider
Cascade Division and Mother Application to Consider

This interpretation of the INPI is very surprisingbecause it is exactly the opposite of the European position (I will be interested to know the legal basis allowing the INPI to take this position) ...

This position is even in contradiction with the fact that one can divide patent applications "in cascade": this possibility would be useless if the really important demand for the evaluation of the preceding conditions is the request "mother initial", no ?

It should be noted that judges (Paris Court of Appeal, pole 5 ch. 2, November 22, 2019, RG n ° 18/27433) have validated this interpretation of the INPI. Indeed, according to the judges, the term "patent" of the article R612-34 CPI refers to the term “initial patent application” in the same sentence. Furthermore, according to them, the term “initial request” is the “root” request (because the article L612-4 CPI provides that divisional applications benefit from the filing date of the parent application).

I admit that I am still skeptical…

Indeed :

  • syntactically in French, there is nothing to say that the term patent refers to the term "original patent application". It is quite possible that the term "patent" means the patent that we are going to obtain (ie that of the divisional application in the case of stunts)
    • Until payment of the fee for the issue and printing of the patent specification ": This part of the sentence indicates only one time condition;
    • the applicant may, on his own initiative, file divisional applications for his initial patent application »: This part of the sentence indicates only the object that we are going to divide.
  • if the reasoning of the Court of Appeal were correct, this would mean that cascading divisions would not be possible since it would be possible to divide only the initial application according to R612-34 CPI (However, the directives of the INPI provides for this case… INPI Examination Guidelines, IB III.2).
Forced division

It should be noted that the article R612-34 CPI is only intended for divisions initiated by the applicant.

Consequently, in the event of a problem of unity of invention, it would seem that this article is not applicable (and therefore that the reasoning of the Court of Appeal in the Kubota decision (Paris Court of Appeal, pole 5 ch. 2, November 22, 2019, RG n ° 18/27433) Not Applicable).

If we refer to the article L612-4 CPI, we saw that an application which does not meet the requirement of unity of invention must be divided.

Therefore, I do not see how the INPI could refuse a “forced” divisional, even if this divisional request is of 2nd generation and the “initial” request is no longer pending.

If my interpretation is correct, it would mean that there is a discrepancy between the “forced” divisional and the divisional requests “at the initiative of the holder”… which is rarely a good idea…

Furthermore, this could encourage applicants to create a problem of unity of invention when filing their first generation divisional application (or even after receiving the search report) in order to reserve the right to divide later.

Classic conditions

In any case, the filing of a divisional application remains the filing of an application: thus, the conditions of standard form (description, request for grant, etc.) must be respected (R612-35 CPIparagraph 1).

Information specific to the divisional application

The request for grant must mention (INPI Examination Guidelines, IB III.1):

Otherwise, the request is treated as a "normal" application (and the parent application may be an enforceable claim under L611-11 CPI paragraph (3) (INPI Examination Guidelines, IB III.1).

Applicants

Applicants for the divisional application must be exactly those of the parent application (R612-34 CPI and INPI Examination Guidelines, IB III.4), unless an assignment has been registered, validly, to GNI.

If the claimant does not coincide with the GNI information, the claimant of the division is informed and can justify this fact by producing evidence of an assignment not yet recorded in GNI (INPI Examination Guidelines, IB III.4).

Inventors

Like any patent application, it is possible to designate the inventors within a 16 months from the actual filing date (here, that of the parent application, R612-11 CPI, paragraph 2 together R612-10 CPI, paragraph 1, 3 °).

Nevertheless, for divisional applications, it is always possible to designate inventors within a 2 months from the invitation of the R612-11 CPI (R612-35 CPIparagraph 4).

Taxes to pay

Filing and search fees

Time limit

Deposit and search fees must be paid within 1 month from the division (R612-35 CPI, paragraph 1 together R612-5 CPI).

Otherwise, the request is rejected (R612-45 CPI, paragraph 1, 2 °).

The applicant has a period of 2 months from the date of receipt of the notification of rejection to pay the corresponding fee plus a surcharge (ie 50% the unpaid royalty, Order of 24 April 2008 on procedural fees collected by the INPI, Appendix): if nothing is done, the rejection becomes definitive.

Filing fee

The amount of the deposit fee is set atOrder of 24 April 2008 on procedural fees collected by the INPI, Annex) :

  • 36 € for a paper filing;
  • 26 € for an electronic filing.

Search fee

The amount of the research fee is set atOrder of 24 April 2008 on procedural fees collected by the INPI, Annex) :

  • 520 € for a standard search;
  • 156 € for a search if the request is a request under foreign priority accompanied by a research report recognized "equivalent" by the DG of the INPI, ie:
    • sub-priority of a request Swiss (Decision 92-286 of the Director General of the INPI), if the content is identical and if the search report is provided when paying the research fee;
    • sub-priority of a request Dutch (decision 92-287 of the Director General of the INPI), if the content is identical and if the search report is provided when paying the research fee;
    • sub-priority of a request Belgian (decision 96-408, of the Director General of the INPI) if the content is identical and if the search report is provided when paying the research fee.

Claims fees

Principle

If the number of claims provided exceeds 10, a claim fee is due for each claim from the 11th (R411-17 CPI).

This tax is 40 € for each claim from the 11th (Order of 24 April 2008 on procedural fees collected by the INPI, Annex).

Deadlines

If the applicant does not pay, a notification is sent to the applicant (R612-46 CPIparagraph (1) by fixing a deadline to pay this tax.

Otherwise, the request is rejected (R612-46 CPIparagraph 3).

Annual taxes

When filing a French divisional application, it is necessary to pay the annual fees (R613-46 CPI).

Concerning the deadlines already expired, the article R613-47 CPI provides that the annual fee is considered to be validly paid if the payment has not later than the last day of the fourth month following the date of receipt of the documents of the divisional application ».

The question then is: "Do the taxes already due have a grace period of 6 months of the article? L612-19 CPI paragraph 2? ».

According to the directives of the INPI (INPI Examination Guidelines, II-A 2), the answer is without appeal: it is appropriate to apply the period of 6 months from the end of the period of 4 previous months.

Annual fees for a divisional (interpretation of the INPI)
Annual fees for a divisional (interpretation of the INPI)

I am personally more reserved: in my opinion nothing in the code allows to say that.

If the period of 4 months is a period during which the payment "is considered validly performed" (legal fiction of the article R613-47 CPI), the due date of the annual fee (ie the date on which the payment is due) does not seem to me to be modified.

Thus, according to my personal interpretation, the 6-month period begins on the "normal" due date of the annuity.

Annual fees for a divisional (personal interpretation)
Annual fees for a divisional (personal interpretation)

I let you decide which of the two interpretations is correct.

Tax reductions

A reduction of royalties is provided if the applicant isL612-20 CPI together R613-63 CPI):

  • a physical person ;
    • the reduction is of right and no proof is necessary;
  • an SME with less than 1,000 employees whose capital is not more than 25% owned by an entity that does not meet these initial conditions;
    • it is necessary to provide, within the 1 month from the filing of the patent application, a written reduction request and a certificate on the honor of belonging to this category, dated and signed by the corporate officer (INPI Examination GuidelinesII-B 2);
  • a non-profit organization (NPO) in the education or research sector:
    • it is necessary to provide, within the 1 month from the filing of the patent application, a reduction request in writing and a copy of the statutes (INPI Examination Guidelines, II-B 2).

Where there are multiple applicants, all applicants must meet these conditions (R613-63 CPI).

The reduction is 50% for (R613-63 CPI together Order of 24 April 2008 on procedural fees collected by the INPI, Art 2):

  • the deposit fee;
  • the research fee
    • unless the application is a foreign priority application accompanied by a research report recognized as "equivalent" by the DG of the INPI;
  • annuities for years 1 to 5.

The reduction is 25% for (R613-63 CPI together Order of 24 April 2008 on procedural fees collected by the INPI, Art 2):

  • annuities for years 6 and 7.

Claims fees are not reduced.

Some procedural elements

Priority

It is possible to claim a priority if it has been in the parent application (INPI Examination Guidelines, IB III.5).

On the other hand, it is not possible to add a priority unless it is added (R612-24 CPI, paragraphs 2 and 3):

  • within 4 months of filing the parent application;
  • within 16 months of the oldest priority (existing or added).

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