Publication and provisional protection

Publication and provisional protection

Once filed, a patent application will be published. This publication gives rise to temporary protection against third parties.

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Chapter 1. Publication of the application

Section 1.1. Publication date

1.1.1. Principle

When a patent application is filed, it is not immediately published.

Nevertheless, on the expiry of a 18 months (from the priority date or in the absence of the filing date of the application), the application will be automatically published (L612-21 CPI, 1 °).

The publication consists of a mention to the BOPI (published every other Friday) and a publication at the INPI (L612-21 CPI, 1 °).

1.1.2. Filer information

The applicant is informed of the date of publication, its publication number and the corresponding BOPI number (INPI Examination Guidelines, ID).

1.1.3. Early publication

1) Due to the plaintiff

The patent application may be published before that period 18 monthsif the applicant specifically requests it (L612-21 CPI, 1 ° and R612-39 CPI).

The request must be made in writing (INPI Examination Guidelines, ID).

The goal is most often:

  • to bring the demand as quickly as possible into the state of the art and for most countries of the world;
  • to benefit from a rapid provisional protection.
2) Due to the fast delivery?

Unlike the European procedure, there is no case of advance publication due to the issue.

Indeed, the publication of the preliminary search report launches a period of 3 months for third-party observations (R612-63 CPI).

The final search report can not therefore be drawn up before the deadline for 18 months (or the request for advance publication) and therefore the issue can not occur before this publication (L612-17 ICC together L612-14 CPI).

1.1.4. Absence publication

1) Case of non-publication

The application is not published if it is, before the start of the technical preparations for publication (R612-39 CPI paragraph 4 and INPI Examination Guidelines, ID 3):

  • withdrawn, or
  • rejected.

Nevertheless, this principle knows an exception if:

  • the request has been divided (R612-39 CPI paragraph 4);
  • the request is a request whose benefit from the filing date has been requested (ie internal priority, R612-39 CPIparagraph 5) unless the applicant has waived this right.

Moreover, the loss of demand (ie the non-payment of annual fees, R612-72 CPI) does not prevent publication (INPI Examination Guidelines, ID 3).

2) Withdrawal declaration

The withdrawal should be explicit and should preferably be done via an ad hoc form (INPI Examination Guidelines, IF).

This withdrawal can only target one request.

3) Publication despite a withdrawal

It may happen (eg error of the INPI, withdrawal after the start of technical preparations) that, despite the effective withdrawal of the request, the application is still published by the INPI.

In the latter situation, it is probable that this publication can not be considered as a publication according to the article L611-11 CPI paragraph 3, because publication occurs when the document is no longer a French application.

Section 1.2. Technical preparations for publication

The beginning of the technical preparations for publication is, for the INPI, beginning around 6 weeks before publication (R612-40 CPI, “Decision of the DG of INPI on technical preparations for the publication of patent applications” , Decision 2011-714 published in BOPI 12/06 and INPI Examination Guidelines, ID).

Section 1.3. Content of the publication

1.3.1. Principle: type A1 publication

For the INPI, the publication A1 is the publication of a patent application (see the first pages of any BOPI which lists the correspondences).

1.3.2. Name of the initial applicant?

If before publication an assignment is made, it should be noted that the publication will show the name of the original applicant and not the name of the current holder of the patent application.

Indeed, no registration is made to GNI before publication (R613-53 CPI).

1.3.3. Types of publication

The different nomenclatures are the following (note, they are significantly different in Europe):

  • A1 : patent application;
  • A2 : application for certification of addition to a patent (it no longer exists but ...);
  • A3 : application for a utility certificate;
  • A4 : application for certificate of addition to a utility certificate (it no longer exists but ...).

Chapter 2. Temporary protection

Section 2.1. Start of protection

In theory, the exclusive right of exploitation runs from deposit demand (L613-1 CPI).

Nevertheless, this right is unenforceable to any third party before publication of the patent application (L615-4 CPIparagraph (1) or its notification.

Thus, after publication of the patent application, protection is granted to the applicant (provided that the scope of the claims has not been extended before the issue, L615-4 CPIparagraph 2).

Section 2.2. Scope of protection

In the event that the patent application has been limited after publication (for final grant), the scope of provisional protection will be retroactively modified (L613-2 CPIbecause it is the granted claims that define the scope of the patent).

Of course :

  • if prior to grant, the patent application is withdrawn or rejected, the provisional protection will be retroactively destroyed (L613-2 CPIit is in fact a "complete" limitation);
  • if the patent application or patent is revoked, limited or declared void, the provisional protection will be retroactively destroyed (L613-27 CPI, C. Cass. ass. pl. of February 17, 2012 No.10-24282).

Section 2.3. Case of European or Euro-PCT applications

If the request in question is a European application or a Euro-PCT application (which is the same), provisional protection runs only from the publication of the translation of the claims (L614-9 CPIsecond paragraph) by the INPI.

The translation is provided to the INPI by the applicant (R614-11 CPI). A publication fee of 36 € is then requested (Order of 24 April 2008 on procedural fees collected by the INPI, Annex).

If no translation is provided, temporary protection does not run.

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