Filing requirements

Filing requirements

Although obtaining a filing date is relatively straightforward, this does not mean that there are no other filing requirements.

Contents

Chapter 1. Deposit Requirements

Section 1.1. Providing the translation of the application

1.1.1. requirements

1.1.2. Sanction

Section 1.2. Supply of the request for grant

1.2.1. requirements

1.2.2. Sanction

Section 1.3. Provision of claim (s)

1.3.1. requirements

1.3.2. Sanction

1.3.3. If the number of claims exceeds 10

1) Principle

2) Time limits

3) Sanction

Section 1.4. Provision of the abstract

1.4.1. requirements

1.4.2. Form

1.4.3. Sanction

Section 1.5. Payment of filing and search fees

1.5.1. requirements

1.5.2. Amount

1.5.3. Tax reduction

1.5.4. sanctions

Section 1.6. Designation of the inventor

1.6.1. requirements

1.6.2. Non-publication

1.6.3. Rectification

1.6.4. Penalty in case of non-designation or irregularities

1.6.5. Penalty in case of bad designation

Section 1.7. Claiming priority

1.7.1. Requirements for the declaration of priority

1.7.2. Requirement for the supply of the copy

1) Principle and delay

2) Copy format

1.7.3. Requirement to provide an authorization to claim priority

1.7.4. Sanction

1.7.5. Providing a translation of the priority document?

1.7.6. Clarification concerning the loss of the right of priority / renunciation

Section 1.8. Priority claim "internal"

1.8.1. Requirements regarding the request for the benefit of the filing date of a previous French application

1.8.2. Requirement for the supply of the copy

1.8.3. Sanction

Section 1.9. Appointment of an agent

1.9.1. requirements

1.9.2. Documents to be provided by the agent

1.9.3. Sanction

Section 1.10. Formal rules of text and drawings

1.10.1. requirements

1) Drawings

2) Other parts

3) Case of DOCX

4) Sanction

Section 1.11. Listing of nucleotides and amino acids

1.11.1. Form

1.11.2. Examination at the filing

Chapter 2. Summary of Requirements

See the latest changes

Chapter 1. Deposit Requirements

Section 1.1. Providing the translation of the application

1.1.1. requirements

It is necessary to provide a translation:

  • the description is not written in French (R612-21 CPIparagraph 2):
    • the INPI informs the applicant of this fact and asks him to provide the translation within a 2 months (R612-21 CPIparagraph 2);
    • The wording of the article R612-21 CPI is not very clear as to whether this period runs from the date of notification or filing (but the notifications of the INPI say that this period runs from the receipt of the notification);
Two months deadline to provide a translation to the INPI of the request
Two months deadline to provide a translation to the INPI of the request Two months deadline to provide a translation to the INPI of the request
  • the patent application was filed using a reference, this reference being not written in French (R612-8 CPI paragraph 5):
    • the deadline for providing this translation is 2 months (R612-8 CPI paragraph (5) from the filing.

1.1.2. Sanction

If no translation is provided within this period, the request is rejected (R612-45 CPI, 1 °).

The rejection decision shall be notified to the applicant who has a 2 months from the date of receipt of the notification to submit comments (R612-45 CPIparagraph 4).

These delays benefit from a recourse in restoration: it is necessary to present this recourse in the 2 months from the cessation of the impediment, but without exceeding 1 year from the expiry of the unobserved period (L612-16 CPI). Acts not completed must be completed within this time.

Section 1.2. Supply of the request for grant

1.2.1. requirements

A request for grant must be filed (R612-3 CPI) on the form provided by the INPI (Decision 2005-469 of the INPI DG).

This request must be signed by the applicant or the representative (R612-10 CPI) and must contain:

  • the fact that a patent is requested;
  • the title of the invention:
    • it must be clear and concise;
    • for technical reasons, it must not contain more than 200 characters and spaces (INPI Examination Guidelines, IC I.1)
    • it must indicate the technical designation of the invention;
    • it must not contain any name of fancy;
  • the designation of the inventor:
    • even though this designation may actually be made on a separate sheet, if the applicant is not the inventor or sole inventor;
  • the surname and first names of the applicant, his nationality, domicile or seat;
    • if it's a person physicalit should not be mentioned a pseudonym, title, etc. (INPI Examination Guidelines, IB II.3.5);
    • if it's a person morals, the name or business name, the legal form, the SIREN number and the APE code must be mentioned, to the exclusion of any other information such as the sign or trade name (INPI Examination Guidelines, IB II.3.5);
    • companies training are represented by a founding partner (INPI Examination Guidelines, IB II.3.5) and a mention is made of the type "M. / Mrs X, acting in the name and on behalf of the company Y in the course of formation ". When the company is incorporated, it must take over the deposit made by the founder and request the registration of this change in the National Patent Register, providing an extract Kbis and a copy of the act to resume the deposit;
  • the name and address of the agent, if any.

The request may also include (R612-11 CPI) the indications relating to:

  • the reduction of the royalty rate granted to the applicant or required by him;
  • previous deposits whose elements were eventually taken back;
  • the claimed priorities;
  • presentation of the invention in an official or officially recognized exhibition.

1.2.2. Sanction

In the absence of a request or a non-compliant request, a notification is sent to the applicant who then has a deadline to provide a compliant request for grant (L612-12 CPI together R612-46 CPI).

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

The applicant may then submit a request for further processing within a 2 months from the notification of the rejection decision (R612-52 CPI, a prosecution fee must be paid and the uncompleted act must be completed within this time).

Section 1.3. Provision of claim (s)

1.3.1. requirements

As we saw in the article "Get a filing date", The claims are no longer necessary to obtain a filing date with the INPI.

Nevertheless, it is necessary to provide anyway for the rest of the procedure and especially for research (R612-3 CPI, 2 °).

1.3.2. Sanction

In case of absence of a claim, a notification is sent to the applicant who then has a deadline to provide at least one claim (L612-12 CPI together R612-46 CPI).

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

The applicant may then submit a request for further processing within a 2 months from the notification of the rejection decision (R612-52 CPI, a prosecution fee must be paid and the uncompleted act must be completed within this time).

1.3.3. If the number of claims exceeds 10

1) Principle

If the number of claims exceeds 10, the applicant must pay the INPI an additional fee per claim exceeding this number (ie from the 11th claim) (R411-17 CPI, 1 °).

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

2) Time limits

This fee is normally due as soon as new claims are filed or amended.

3) Sanction

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).

Section 1.4. Provision of the abstract

1.4.1. requirements

An application must contain an abstract (R612-3 CPI, 3 °).

1.4.2. Form

The abstract must recall the title of the invention and include a concise summary of what is stated in the application (Order of 19 September 1979 on the procedure for filing patent applicationsArticle 15).

The applicant also proposes the drawing that he wishes to have published with the abstract (Order of 19 September 1979 on the procedure for filing patent applicationsArticle 16), but the INPI may choose another if it wishes (Article 9, Decision 2018-156 of the Director General of the INPI): strangely, the INPI sends, in this case, there a notification entitled "irregularity notification"With a proposed correction which is deemed to be accepted within 2 months according to the R612-46 CPI (I do not see how it is an irregularity, but hey) ...

The abstract must not exceed 150 words when accompanied by a drawing and 250 words in the opposite case (Article 9, Decision 2018-156 of the Director General of the INPI).

The abstract must contain references to the accompanying drawings, if relevant (Order of 19 September 1979 on the procedure for filing patent applicationsArticle 16).

1.4.3. Sanction

If there is no abstract or non-compliant abstract, a notification is sent to the applicant who then has a deadline to provide a compliant abstract (L612-12 CPI together R612-46 CPI).

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

The applicant may then submit a request for further processing within a 2 months from the notification of the rejection decision (R612-52 CPI, a prosecution fee must be paid and the uncompleted act must be completed within this time).

Section 1.5. Payment of filing and search fees

1.5.1. requirements

Deposit and search fees must be paid within 1 month from the time of deposit (R612-5 CPI).

1.5.2. Amount

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.

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.

1.5.3. Tax reduction

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 request under foreign priority accompanied by a research report recognized "equivalent" by the DG of the INPI.

In my opinion, the date / signature requirements are supra-legal: only INPI Examination Guidelines mention them and I do not see how the INPI could refuse a written declaration that does not meet these criteria. I even heard that the INPI would ask for the original document ... a legal basis to tell me?

1.5.4. sanctions

Otherwise, the request is rejected (R612-45 CPI, 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, R612-45 CPI, 2 ° and Order of 24 April 2008 on procedural fees collected by the INPI, Annex): if nothing is done, the rejection becomes definitive.

The period of 1 month and the period of 2 months benefit from a recourse in restoration: it is necessary to present this recourse in the 2 months from the cessation of the impediment, but without exceeding 1 year from the expiry of the unobserved period (L612-16 CPI). Acts not completed must be completed within this time.

Section 1.6. Designation of the inventor

1.6.1. requirements

It is necessary, during the deposit, to designate the inventor (s) (L611-9 CPI together R612-10 CPI 3 °), physical person (s).

Nevertheless, it remains possible to designate inventors within a 16 months from the earliest priority claimed (R612-11 CPIparagraph 2).

1.6.2. Non-publication

The inventor may object to the publication of his name on the patent / patent application (R611-16 CPI): the applicant then transmits to the INPI a waiver signed by the inventor.

The INPI will not mention its name on the application if the request for non-publication comes before the end of the technical preparations for publication (INPI Examination Guidelines, IB II.4.4).

1.6.3. Rectification

It is possible to make an inventor correction upon request.

This rectification can be made at any time, even after the issuance (in the latter case, it is necessary to apply for registration in the GNI, INPI Examination Guidelines, IB II.4.3).

Corrigenda can be:

  • the addition of an inventor (R611-16 CPI):
    • at the request of the applicant or holder of the title or with their consent (R611-16 CPIparagraph 1);
    • or at the request of a third party producing a decision that has become res judicata recognizing its right to be appointed (R611-16 CPIparagraph 2);
  • the removal of an inventor wrongly designated (R611-17 CPI):
    • his written agreement is then necessary.

1.6.4. Penalty in case of non-designation or irregularities

In the absence of a designation at the time of filing, the INPI sends a notification accompanied by a form of "designation of inventor (s)" to the applicant (R612-11 CPIparagraph 6, and INPI Examination Guidelines, IB II.4.1) enabling it to designate inventors within a 16 months from the earliest priority claimed.

If no appointment within this period of 16 months, a rejection decision notified to the applicant (R612-45 CPI).

The applicant then has a period of 2 months from the date of receipt of the notification to submit comments (this is not a period of regularization), particularly if the designation has, in fact, taken place.

The 16-month period also benefits from a recourse in restoration: it must be presented in the 2 months from the cessation of the impediment, but without exceeding 1 year from the expiry of the unobserved period (L612-16 CPI). Acts not completed must be completed within this time.

1.6.5. Penalty in case of bad designation

Yes "Mickey Mouse " is designated as inventor, it does not seem that the INPI can reject the request: The INPI does not check the accuracy of this information (R611-15 CPI) and no penalty is incurred.

Section 1.7. Claiming priority

1.7.1. Requirements for the declaration of priority

If a priority claim is made, a declaration of priority must be made (L612-7 CPI paragraph 1).

This declaration includes (R612-24 CPI, paragraph 1):

  • the filing date;
  • the State in which the deposit was made;
    • the State is a State which has acceded to the CUP or a member of the WTO or a State granting a right of equivalent priority for French applications (L611-12 CPI);
  • the deposit number.

Several priority claims can be made (L612-7 CPI paragraph 2).

This declaration must be completed at the filing or:

  • in a delay of 16 months from the earliest priority date claimed (for an addition, R612-24 CPIparagraph 2).
  • in a delay of 16 months from the earliest date among (for correction, R612-24 CPIparagraph 3):
    • the earliest priority date before correction and,
    • the earliest priority date after correction ;
  • in a delay of 4 months from the filing date (for correction, R612-24 CPIparagraph 3).

However, these deadlines are no longer relevant if a request for advance publication is presented according to the article L612-21 CPI, 1 ° (R612-24 CPIparagraph 4).

Moreover, these deadlines do not benefit from recourse in restoration or request for continuation of procedure.

1.7.2. Requirement for the supply of the copy

1) Principle and delay

A copy of the priority document must also be provided (L612-7 CPIparagraph 1 together R612-24 CPIparagraph (5) within a period of 16 months from the priority date (a priori, this deadline is not affected by an advance publication).

This period benefits from a recourse in restoration: it is necessary to present this recourse in the 2 months from the cessation of the impediment, but without exceeding 1 year from the expiry of the unobserved period (L612-16 CPI). acts not completed must be performed within this time limit.

2) Copy format

Prior to January 1, 2009, a copy of the application must be certified by the authority that received the previous application and accompanied by a certificate from that authority stating its filing date.

Nevertheless, this requirement has now disappeared.

A simple print / photocopy seems to suffice.

1.7.3. Requirement to provide an authorization to claim priority

If the applicant is not identical in the priority application, the copy must be accompanied by an authorization to claim the priority given in writing by the owner of the earlier application (R612-24 CPI, paragraph 5) and possibly a translation of this authorization if it is not in French, English or German (Order of 19 September 1979 on the procedure for filing patent applicationsArticle 20 and Article 9 Decision 2018-156 of the Director General of the INPI).

1.7.4. Sanction

If any of the above requirements are not fulfilled, priority is declared inadmissible (R612-24 CPIparagraph 6).

Only the deadline for supplying the copy of the priority document benefits from a recourse in restoration: it must be presented in the 2 months from the cessation of the impediment, but without exceeding 1 year from the expiry of the unobserved period (L612-16 CPI). Acts not completed must be completed within this time.

1.7.5. Providing a translation of the priority document?

INPI can require a translation of the part of that copy containing the filing date and the number of the foreign application, together with an indication of the State in which or for which it was filed (Order of 19 September 1979 on the procedure for filing patent applicationsArticle 20 and Article 9 Decision 2018-156 of the Director General of the INPI)).

However, do not be surprised, the INPI will issue a notification of irregularity to require this translation (personally, I think it is a heresy since, formally, there are no irregularities).

1.7.6. Clarification concerning the loss of the right of priority / renunciation

It is entirely possible to waive or withdraw a priority (this principle, even if not provided for by the code, is derived from the possibility of total or partial withdrawal of the request of the article L613-24 CPI according to INPI Examination Guidelines, IB II.5.6).

Deadlines (only those not expired, INPI Examination Guidelines, IB II.5.6.b) are then recalculated as from the new effective date of the application.

In addition, publication is delayed if the withdrawal occurs before the technical preparations for publication begin (INPI Examination Guidelines, IB II.5.6.a).

Section 1.8. Priority claim "internal"

1.8.1. Requirements regarding the request for the benefit of the filing date of a previous French application

This "internal priority" request can be submitted for a French application A (L612-3 CPI):

  • if another French application B (filed by the same applicant) was filed less than 12 months before;
  • if neither A nor B claims "normal" priority;
  • if B does not claim an "internal" priority of more than 12 months in relation to A;
  • if B is "publishable" (R612-25 CPI, 3 °).

The request must be presented during the deposit demand (R612-25 CPI, 1 °).

1.8.2. Requirement for the supply of the copy

Although the INPI is in possession of the priority request, it is still necessary to provide a copy of the application whose benefit from the filing date is sought, highlighting the identical parts (R612-3 CPI).

This highlighting may consist of an underlining, highlighting, framing of the elements common to both applications or a cover letter indicating that all the elements contained in the previous application are included in the second application (INPI Examination Guidelines, IB II.6).

1.8.3. Sanction

The request for the benefit of the filing date of a previous French application is inadmissible if the requirements mentioned above (except those concerning the supply of the copy) are not fulfilled.

An irregularity notification is sent to the applicant when (R612-46 CPI):

  • the applicant is not the holder of the previous application or its successor,
  • the copy of the previous application has not been provided,
  • the elements taken over have not been highlighted on the copy of the previous application.

A delay is time applicant to correct this irregularity. Failing regularization within a period time, the patent application is rejected (R612-46 CPI).

The applicant may then submit a request for further processing within a 2 months from the notification of the rejection decision (R612-52 CPI, a prosecution fee must be paid and the uncompleted act must be completed within this time).

Section 1.9. Appointment of an agent

1.9.1. requirements

If the filing can be made by the applicant himself, the applicant may have to appoint a representative for the remainder of the proceedings (R612-2 CPI).

The applicant must appoint a representative, in 2 months following the filing, if the applicant is not domiciled, headquartered or established in France or another Member State of the European Union or the European Economic Area (R612-2 CPIparagraph 2).

The proxy can be:

  • an Industrial Property Attorney (title regulated by the article L422-1 CPI) mention "patent of invention" (L422-4 CPI together L422-1 CPIlast paragraph);
  • a lawyer ;
  • a person registered on the special list of the article L422-5 CPI (specialist benefiting from the clause "grandfather", it does not remain much);
  • a business or public institution to which the applicant is contractually bound;
  • a specialized professional organization;
  • a foreign council domiciled in a member state of the EC or the EEC and entitled to act in this state (if it acts before the INPI for occasional).

1.9.2. Documents to be provided by the agent

Councils and lawyers do not have to justify their quality and do not need to provide power (R612-2 CPIparagraph 3 and INPI Examination Guidelines, IB II-2.3): they must just indicate their quality (the indication of the number of the CPI is a plus, facilitating the audit by the INPI).

The persons registered on the special list of the article L422-5 CPI do not have to justify their quality, but must provide power (INPI Examination Guidelines, IB II-2.3).

The company or public institution must specify the necessary contractual link. It must also provide power (INPI Examination Guidelines, IB II-2.3).

Specialized professional organizations must justify that the applicant is one of their members and provide the power conferred on them by the latter (INPI Examination Guidelines, IB II-2.3).

Professionals from a Member State of the European Union or the European Economic Area must produce a certificate from the Industrial Property Office to which they are entitled to represent third parties. This certificate can be produced once and for all at the INPI service (INPI Examination Guidelines, IB II-2.3).

1.9.3. Sanction

I can not determine the sanction in case of non-appointment: I am not sure that this non-constitution is an irregularity of "form" of the article R612-46 CPI.

The most likely is that this irregularity leads to the fact that the acts performed by the applicant are not considered valid by the INPI: a response to a notification will therefore be considered as not received.The sanction will come from this non -reply.

Section 1.10. Formal rules of text and drawings

1.10.1. requirements

1) Drawings

TheOrder of 19 September 1979 on the procedure for filing patent applications (Clauses 12 to 14) gives the different requirements that the drawings must fulfill, including:

  • the drawings must be in black and white, with lines, without color or wash;
  • the inscriptions on the drawings (references, text, etc.) must be simple (not circled, without parentheses, without quotation marks). They must use the Latin or Greek alphabet;
  • the font size must not be less than 3.2 mm (the size depends on the font chosen so be careful);
  • the margins can not be smaller than the following scheme:
The different margins for drawings of French depots
2) Other parts

In addition, theOrder of 19 September 1979 on the procedure for filing patent applications (sections 3, 7 to 11) gives the different requirements that the other parts of the application must fulfill (eg request, description and claims), in particular:

  • the sheets must be in A4 format and be used in portrait format;
  • the text must be typed or printed. Only symbols and graphic characters, chemical or mathematical formulas can be handwritten or drawn if necessary;
  • for typed texts, the line spacing must be 1.5;
  • all texts must be with a font whose capitals are at least 2.1 mm high (the size depends on the font chosen so be careful) and in black;
  • the lines of the description and the claims must be numbered 5 in 5, to the left of the sheet (but without being in the margin);
  • the description does not include references to the claims;
  • the sheets must be numbered with an Arabic numeral centered at the top of the sheet (but without being in the margin)
  • the margins can not be smaller than the following scheme:
The different margins for other parts of the French depots
3) Case of DOCX

It is interesting to note that Article 7 of the Decision 2018-156 of the Director General of the INPI seems to consider that this formalism is not applicable for patent applications filed in DOCX.

For example, Article 9 of the Decision 2018-156 of the Director General of the INPI provides for a minimum font size of 11 points while theOrder of 19 September 1979 on the procedure for filing patent applications provides characters whose capital letters are at least 0.21 cm high (other than drawings) and 0.32 cm high for the characters in the drawings.

This is very strange and incomprehensible ...

4) Sanction

In case of irregularity, a deadline is time applicant to correct his request (R612-46 CPIparagraph 1).

Failing regularization within the deadline time, the patent application is rejected (R612-46 CPI, paragraph 3), however the applicant is deemed to have accepted the proposed correction proposed by the INPI (if it exists) if it does not answer (R612-46 CPIparagraph 2).

The applicant may then submit a request for further processing within a 2 months from the notification of the rejection decision (R612-52 CPI, a prosecution fee must be paid and the uncompleted act must be completed within this time).

Section 1.11. Listing of nucleotides and amino acids

1.11.1. Form

The description of the invention may be accompanied by a list of nucleotide or amino acid sequences which is given in the appendix (R612-13 CPI, 2 °).

The standard used is WIPO Standard ST 25 (INPI Examination Guidelines, IB II.3.9).

It is called "Sequence List" and is the subject of a separate pagination (from 1 to n) even if it is part of the description (INPI Examination Guidelines, IC I.3.15).

This list must also be filed in computer-readable form on a floppy disk or CD-ROMINPI Examination Guidelines, IB II.3.9).

A signed declaration must be provided to certify that the listing in paper form is identical to the electronic one (INPI Examination Guidelines, IB II.3.9).

1.11.2. Examination at the filing

If the prescribed listing has not been filed or incorrectly, a deadline is time applicant to correct his request (R612-46 CPIparagraph 1).

Failing regularization within the deadline time, the patent application is rejected (R612-46 CPIparagraph 3).

The applicant may then submit a request for further processing within a 2 months from the notification of the rejection decision (R612-52 CPI, a prosecution fee must be paid and the uncompleted act must be completed within this time).

Chapter 2. Summary of Requirements

Summary of French requirements
Summary of French requirements Summary of French requirements

One Comment:

  1. Hello,

    Thank you for this constructive article.

    Regards,

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