Prior art search

Prior art search

In order to know if your invention is patentable, the INPI will carry out a search of anteriority: the preliminary research report.

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Chapter 1. Content permitting a search

Section 1.1. Principle

If a patent application has obtained a filing date, a search report is prepared for that application (L612-14 CPI and R612-57 CPI paragraph 1): this report makes it possible to know elements of the state of the art which may be taken into account for the evaluation of the patentability of the invention (INPI Examination Guidelines, IC VIII.2).

Section 1.2. Description or claims not permitting search

In some cases, the description does not allow the establishment of a search report: it is then necessary to to reject the demand (L.612-12 CPI 6 °).

In fact, the description and the claims must make it possible to understand the technical problem raised and the manner in which the invention proposes to answer them (INPI Examination Guidelines, IC II.1.1, for the description and INPI Examination Guidelines, IC IV.1.3, for the claims): they must be so clear, unambiguous and solve the technical problem (eg exclusion of fanciful theories: perpetual motion).

Chapter 2. Search Basics

Section 2.1. Positive base

The search is based on the claims filed (R612-57 CPI paragraph (1), taking into account the description and, where appropriate, the drawings.

Independent but also dependent claims are sought (INPI Examination Guidelines, IC VIII.3).

Section 2.2. Negative base

If a characteristic "commonplace"Is present in a claim, it is quite probable that no research will be done on this feature and no document will be cited disclosing this characteristic: this does not mean that this characteristic is inventive (INPI Examination Guidelines, IC VIII.3).

Chapter 3. Type of search

Section 3.1. Normal search

A "normal" search is a search performed on the basis of the claims as filed.

Section 3.2. Partial search

It may be that in some cases the research is limited to certain elements (INPI Examination Guidelines, IC VIII.3.3). This is particularly the case if the claims are:

  • too large or speculative: research is then carried out on a narrower basis,
  • Too many,
  • defined by unknown obscure parameters,
  • defined according to the result to be achieved.

The research report mentions this fact (INPI Examination Guidelines, IC VIII.3.3).

Section 3.3. Additional search

If the subject of new claims is not covered by the claims as filed (INPI Examination Guidelines, IC VIII.6.1.a), a notification is sent to the applicant to pay the fee for drawing up a search report within a time (R612-61 CPI).

This is particularly the case if the new claims (INPI Examination Guidelines, IC VIII.6.1.a):

  • constitute a generalization of the preceding claims;
  • modify the inventive concept (eg variant not previously claimed);
  • include claims of a category (process, product) not previously claimed.

Otherwise, the new claims are ignored (ie declared inadmissible) and the procedure is continued with the claims on the basis of which the search was carried out (R612-61 CPI).

The complementary search procedure is the same as for normal search (INPI Examination Guidelines, IC VIII.6.2).

Chapter 4. Communication of foreign research reports

Section 4.1. Principle

If a patent application concerning the same invention (whether or not a priority has been claimed) has been filed abroad, the INPI may request the submission of foreign search reports (INPI Examination Guidelines, IC VIII.4.1 and R612-56-1 CPI).

Section 4.2. Type of information requested

It is appropriate to provide all the information available to the applicant on the date of notification on the state of the art which has been taken into account in the foreign proceedings (INPI Examination Guidelines, IC VIII.4.1 and R612-56-1 CPI).

The patent documents do not seem to be able to be required, but the documents "Non-patent"Can beR612-56-1 CPIparagraph 2).

A translation of relevant passages from the documents cited may be required (INPI Examination Guidelines, IC VIII.4.1 and R612-56-1 CPIparagraph 2).

Section 4.3. Time and sanction

The applicant has a deadline time (R612-56-1 CPIparagraph 3) of 2 months (INPI Examination Guidelines, IC VIII.4.1), renewable once, from the date of receipt of this invitation to communicate to the INPI all of this information.

Otherwise, the request is rejected (R612-56-1 CPI, paragraph 3 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.

Chapter 5. Changing Demand

Le demandeur ne peut plus modifier sa demande à partir du moment où celui-ci fournit les informations de l’état de la technique pris en considération pour une demande antérieure étrangère (ou indique être dans l’impossibilité de les fournir) ou si l’établissement du rapport de recherche a commencé (L612-13 CPI paragraph 1 and INPI Examination Guidelines, IC VIII.4.2).

The applicant can therefore no longer modify the claims on his own initiative until the French preliminary search report has been notified (L612-13 CPI paragraph 1 and INPI Examination Guidelines, IC VIII.4.2).

Chapter 6. Content of the research report

Section 6.1. Research report

The different documents are classified according to their relevance (INPI Examination Guidelines, IC VIII.3.1):

  • Current classifications:
    • X means that the document is particularly relevant on its own (ie it would destroy the novelty of the request);
    • Y means that the document is relevant if it was combined with another document of the same type (ie it would destroy the inventive step of the request);
    • AT means that the document is simply quoted because it is in a close field, but does not anticipate the request;
  • Classifications a little rarer:
    • T means that the document presents the scientific theory serving as the basis for the request (but without anticipating it);
    • D means that the document is quoted by the request itself. This classification can be combined with another classification (for example "DX");
    • P means that the document is an intermediate document: it would be relevant if the priority was not valid. This classification may be combined with another classification (eg "PY");
    • E means that the document has a filing date earlier than the date of the application examined, but published afterwards (it may be L611-11 CPI paragraph 3 if it is a request FR, EP / FR or PCT / FR);
  • Rare classifications:
    • O means that the disclosure is not a written disclosure;
    • The means that the document is cited for another reason (often this classification serves as a classification " catchall ” )

In addition, each document cited is related to the claims against which it is relevant (R612-57 CPIparagraph 3).

Section 6.2. Written opinion

Since 3 March 2007, the search report has been accompanied by an opinion on patentability (R612-57 CPI paragraph 1).

This notice is intended to assist the applicant in interpreting the preliminary search report with respect to novelty and inventive step (INPI Examination Guidelines, IC VIII.3.4).

Chapter 7. Transmission of the preliminary search report

Section 7.1. Principle

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

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

Section 7.2. Mandatory answer?

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

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.

Chapter 8. Publication of the preliminary research report

The preliminary search report is published at the same time as the patent application (R612-62 CPI).

If this preliminary search report is not yet established on the day of publication, it is published separately as soon as it is notified to the applicant (R612-62 CPI).

The publication date is entered in the BOPI (R612-62 CPI).

Chapter 9. Establishment of the final search report

Once the response times to the preliminary search report have expired, a "definitive" search report is established (R612-65 CPI and INPI Examination Guidelines, IC VIII.7).

Chapter 10. Research Tax

Section 10.1. Amount

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.

The reduced fee 156 € is granted if, in addition, the applicant:

  • provides the foreign search report when paying the tax;
  • provides the documents cited in this report;
  • provides a certification stating that the claims / description are identical (or the only differences are purely of form).

Section 10.2. 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 research fee unless the application is a request under foreign priority accompanied by a research report recognized "equivalent" by the DG of the INPI.

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