Examination of the application and grant of a patent

Examination of the application and grant of a patent

Once the preliminary search report has been issued, it must be answered to formally begin the review of the application. It is from this moment that a grant of a patent can be envisaged.

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Chapter 1. Response to the preliminary search report

Section 1.1. Principle

Upon its establishment, the preliminary search report is sent to the applicant (R612-58 CPI).

He may then take a position on the preliminary search report (R612-59 CPI).

Section 1.2. Mandatory answer?

The answer is mandatory if the preliminary search report cites anteriorities (R612-58 CPI), in particular X or Y or E-enforceable documents (INPI Examination Guidelines, IC VIII.5.2.1).

Section 1.3. Time limit

The applicant has a period of 3 months (renewable upon request once) in order to file new claims or make submissions (R612-59 CPI).

Section 1.4. Sanction in case of non-response

In the absence of a timely response, the request is rejected (R612-58 CPI together L612-12 CPI 9 ° together R612-51 CPI) after a formal notice before rejection has been sent to the applicant and a new deadline time it was granted.

Section 1.5. modifications

In response to the preliminary search report, the applicant may file new claims (R612-59 CPI) and / or submit comments.

At first sight, these modifications are quite open and do not necessarily have to answer an objection of the Examiner (R612-37 CPI).

The requester may optionally make changes several times during the open response time (INPI Examination Guidelines, IC VIII.5.2.1.b).

In any case, the following principles must be respected:

A minor modification of the claims (ie without impact on the merits) will not be considered as an answer (INPI Examination Guidelines, IC VIII.5.2.1.b).

Section 1.6. Change of claimed object

1.6.1. Principle

If the applicant, following the modification of the above-mentioned claims, decides to completely modify the claimed object (eg choice of another invention present in the description), a notification is sent to him asking him to pay a new tax complementary research (R612-61 CPI) in one deadline.

Otherwise, the examination continues with the previous set of claims (R612-61 CPI).

1.6.2. Criterion

The applicable criterion for determining whether a new claim fee is due is "are the new claims covered by the old claims?” .

If they are more limited, this should not be a problem (INPI Examination Guidelines, IC VIII.6.1.a).

New research will have to take place if the new claims (INPI Examination Guidelines, IC VIII.6.1.a):

  • constitute a generalization or extend the scope of the claims originally lodged
  • modify the inventive concept (for example, variant not previously claimed)
  • include claims of a category (process, product) not previously claimed.

Chapter 2. Third party comments on the preliminary search report

Section 2.1. Principle

Once the preliminary search report is published, any third party may send to the INPI third party observations concerning the patentability of the invention (L612-13 CPI paragraph 3).

These observations must be sent in 2 copies enclosing the documents "non-patent" (R612-63 CPIparagraph 2).

The "patent" documents must be sent at the request of the INPI within 2 months from the invitation.

Section 2.2. Time limit

The period during which third parties may address their observations is 3 months from the publication of the preliminary search report (R612-63 CPIparagraph 1).

Section 2.3. Applicant's response

In response to third-party observations, the applicant may file new claims and / or make representations (L612-13 CPI paragraph (3) within a period of 3 months (renewable once upon request) from the receipt of the third party observations by the applicant (R612-64 CPI).

At first sight, these modifications are fairly open and do not necessarily have to answer a third party's objection (R612-37 CPI).

Section 2.4. No response from the applicant

There appears to be no penalty for non-response to this third-party observation.

I like my legislator ...

Chapter 3. Analysis of the response to the RRP

Section 3.1. Analysis of modifications / observations

The examiner reviews the applicant's amendments and comments in response to the preliminary search report and, where appropriate, in response to third-party comments.

Section 3.2. Search for interfering patent applications

This research is left to the discretion of the Examiner: no systematic interference search is carried out after the first research (INPI Examination Guidelines, IC VIII.3.2).

Section 3.3. Procedure in case of new irregularities

These new irregularities may come, in particular (INPI Examination Guidelines, IC VIII.6.1.c):

  • the search for interfering patent applications conducted by the Examiner;
  • documents reported by the applicant;
  • of a new document raised by a third party observation.

A new complementary preliminary search report is then established: the same procedure as for the RRP is carried out (INPI Examination Guidelines, IC VIII.6.2).

Section 3.4. Procedure in case of persistent irregularities

3.4.1. Notice and delay

The INPI sends a formal notice to the applicant to grant him a new deadline of 2 months to correct his request:

  • if the request still contains a irregularity of shape (eg margin, font size, etc.) or if a technical irregularity was introduced during the response to the RRP (R612-46 CPI);
  • if the applicant did not pay a royalty fee (eg claims fee following the provision of a new set of claims) (R612-46 CPI);
  • if the application is a divisional application, and if the content of the application extends beyond the content of the parent application (R612-47 CPI);
  • if the request is not unitary (R612-48 CPI);
  • if the claimed object is not patentable (R612-49 CPI together L612-12 CPI 4 °);
  • if the claimed object is not a invention (R612-49 CPI together L612-12 CPI 5 °);
  • if the request born allows not to make a research (eg new unclear claims) (R612-49 CPI together L612-12 CPI 6 °);
  • if the claims do not melt on the description (R612-49 CPI together L612-12 CPI 5 °);
  • if the applicant do not submit changes in response to the RRP within the specified time (R612-51 CPI together L612-12 CPI 7 °) whereas the absence of manifest novelty was raised;
  • if the applicant did not respond the RRP (ie submission of modifications or comments) (R612-51 CPI together L612-12 CPI 9 °).

3.4.2. Failure to reply to this formal notice

In the absence of a response to this formal notice, the request is rejectedrespectively under the article:

A request for further proceedings may then be made, paying the prescribed fee (R612-52 CPI).

3.4.3. Satisfactory response to the formal notice

Nothing to say: everything is fine for you ... the issue of a patent is approaching!

3.4.4. Unsatisfactory response to the formal notice

1) Rejection

If the request contains a irregularity of shape and that the answer has not been satisfactory for the INPI, the request will be rejected (R612-46 CPIparagraph 3).

The applicant has a period of 2 months to submit a request for further processing, together with a corresponding fee (R612-52 CPI).

It is the same (R612-49 CPI paragraph 2):

  • if the claimed object is not patentable (together L612-12 CPI 4 °);
  • if the claimed object is not a invention (together L612-12 CPI 5 °);
  • if the request born allows not to make a research (eg new unclear claims) (together L612-12 CPI 6 °);
  • if the claims do not melt on the description (together L612-12 CPI 5 °).

Strangely, for these 4 last cases, the INPI directives indicate that a notification of a rejection decision is sent before the rejection (INPI Examination Guidelines, IE 2.2.2.C). However, this is not what I read in the code ... After all, nothing prevents the INPI to be more flexible than the law provides.

2) Draft rejection and rejection decision

In other cases, a draft rejection decision will be notified to the applicant by granting him a new deadline answer to modify its request, respectively under the article:

This draft decision is motivated and quotes the appropriate legal bases (INPI Examination Guidelines, IE 2.3).

In the absence of a satisfactory response, the request is rejected.

Section 3.5. Procedure in case of persistent (but partial) irregularities

1) Principle

It may happen that the patent application is only partially irregular (R612-50 CPI).

This is particularly the case when certain passages of the description are contrary to good morals (L611-17 CPI), are directed to methods of cloning human beings or modifying the human genome (L611-18 CPI) or certain other exclusions from patentability (L611-19 CPI).

This is also the case when the application contains irregularities of partial shapes (L612-1 CPI).

2) Time limit

The notification fixes a deadline to comply with the requirements of the preceding articles (R612-50 CPIparagraph 2).

3) Proposed deletion

The notification specifies the deletions envisaged to make the request compliant (R612-50 CPIparagraph 2).

4) Sanction in case of non-response

In case of non-response or if the answer is not satisfactory, the deletions indicated in the notification are carried out automatically (R612-50 CPIparagraph 3).

Chapter 4. Proposed Issuance

Section 4.1. Invitation to pay the fees for issuing and printing

4.1.1. Principle

When the INPI considers that the request is in order for the issue (ie that there are no more grounds for rejection), a notification is sent to the applicant to invite him to pay the fees for issuing and printing of the title (R612-70 CPI).

Once the payment has been made, the applicant is informed of the issue of his title, indicating the date and the number of the Official Bulletin of Industrial Property in which the issue will be published (INPI Examination Guidelines, IG 1).

4.1.2. Amount

This fee covering both the printing and the issue of the title is 90 € (Order of 24 April 2008 on procedural fees collected by the INPI, Annex).

4.1.3. Time limit

The notification indicates a deadline allowing the applicant to pay these taxes (R612-70 CPI).

4.1.4. Sanction

If the fee is not paid within the specified time, the application is rejected (R612-46 CPI).

The applicant has a period of 2 months to submit a request for further processing, together with a corresponding fee and the fee for issuing and printing (R612-52 CPI).

Section 4.2. Decision of issue

Once this fee has been paid, the director general of the INPI takes a decision granting the patent (R612-70 CPIparagraph 1).

Issuing decisions are subject to appeal to the Paris Court of Appeal (D411-19-1 CPI by exception to R411-19 CPI) in a delay of 1 month (or 3 months if the applicant is not domiciled in France, R411-20 CPI) from the date of the decision.

Section 4.3. Correction of the booklet

If the issue contains an error, the applicant may inform the INPI: an errata will be published in the BOPI (INPI Examination Guidelines, IB VI.2).

This correction must be made within a 4 months from the decision of grant (Council of State, Ternon judgment, 26 October 2001 No. 197018 and INPI Examination Guidelines, IB VI.2).

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