As of April 1, 2020, the INPI has implemented a new procedure (L411-1 CPI): an opposition against French patents whose grant notice has been published in the BOPI from that date onward.
Let’s examine how it works in detail.
Composition of the opposition division
At this stage, there is no information available on this: examiner? number of members?
The only known fact is that an examiner who has handled a patent application cannot handle the opposition (R613-44-5 CPI).
However, this examiner may be heard in the opposition proceedings (R613-4-5 CPI).
Parties to the proceedings
Proprietor
Although not explicitly stated in the texts, the proprietor does appear to be a party to the proceedings… phew!
Opponent
Any person
Any person may file an opposition (L613-23 CPI) without having to demonstrate a legal interest (at least, this condition is not required).
It is entirely possible to file joint oppositions (R613-44 CPI) or to have multiple oppositions against the same patent (in which case, the oppositions will be consolidated, R613-44-3 CPI).
The opponent may be a natural or legal person (R613-44 CPI).
Limitation of the term “any person”
The only limitation to this principle is that the proprietor cannot file an opposition against their own patent (L613-23 CPI).
Straw man
Thus, it is entirely possible for the opponent to be a straw man (i.e., a nominee concealing the « true » opponent).
Representation
Persons who do not have their domicile or registered office in a member state of the EU or the European Economic Area must be represented by a representative (R613-44 CPI).
In the case of a joint opposition, a common representative may be appointed (R613-44 CPI).
Transfer of opponent status
At this stage, there is no indication that a transfer of opponent status is possible.
Nevertheless, based on principles of civil procedure law, we may reasonably assume that a transfer is possible in the following cases:
- inheritance succession;
- universal succession (e.g., merger of legal entities);
- partial succession (i.e., assignment of a department) if the opposition was filed in the interest of the assigned part.
Intervener
The principle of intervention known under the EPC has not been adopted for French opposition.
Similarly, third-party observations during the opposition procedure do not appear to be possible.
Suspension
Principle
The examination phase or the 3-month period for the decision to be issued after the examination phase is suspended (R613-44-10 CPI):
- if the INPI is informed that an action for entitlement is pending (the information must come from the person who initiated the action);
- if an action for invalidity is already pending at the time the opposition is filed;
- if the INPI is awaiting information or elements that may impact the outcome of the opposition or the situation of the parties;
- if the parties jointly agree to suspend the proceedings (for a period of four months, renewable twice – only during the examination phase).
Any decision to suspend is notified to the parties (R613-44-10 CPI).
It is quite surprising that the condition is « an action for invalidity already pending. » What about an action for invalidity that arises after the opposition is filed? There is a risk of some collision …
Resumption following suspension
The procedure resumes if (R613-44-11 CPI):
- the INPI is informed that a decision has been issued in the entitlement action and that this decision is not subject to appeal;
- the INPI is informed that a decision has been issued in the invalidity action and that this decision is not subject to appeal;
- if one of the parties that jointly requested the suspension requests resumption.
One may still wonder, in the first two cases, what happens if the action is simply abandoned?
Upon resumption of the opposition procedure, if the scope of the patent has been modified (typically in the case of an invalidity action where there has been a judicial limitation), the opponent is invited to clarify the scope of its opposition within a specified time limit (R613-44-11 CPI).
Resumption of the procedure is notified without delay to the parties by the INPI, with an indication of the resumption date.
Withdrawal of opposition, surrender of the patent, and ex officio continuation
Withdrawal of all oppositions
If all oppositions are withdrawn, the opposition procedure is closed ex officio (R613-44-12 CPI).
Withdrawal by one of the opponents
As long as at least one opponent remains, there is no reason to close the opposition (R613-44-12 CPI).
However, it is unclear what happens if one of the opponents who filed a joint opposition decides to withdraw from the opposition.
Renunciation, revocation, lapse of the patent
The opposition procedure is automatically closed (R613-44-12 CPI) if:
- the proprietor renounces the claims that are the subject of the opposition;
- the patent is declared invalid by a court decision (e.g., parallel invalidity action);
- the effects of the patent have ceased, unless the opponent demonstrates a legitimate interest in obtaining an opposition decision.
Ex officio continuation of the procedure
In France, the INPI does not have the power to continue the opposition procedure ex officio, even if the patent is manifestly invalid.
Formal aspects
Opposition period
The period for filing an opposition is 9 months (R613-44 CPI) from the date of publication in the BOPI of the grant notice.
The further processing procedure is not applicable to the 9-month period (L612-16 CPI). However, I do not quite understand this clarification, since further processing is available to the applicant and not to the opponent…
Opposition official fee
An opposition official fee will be required to file the opposition (R613-44-1 CPI): €600 (order on official fees in patent matters published on March 8, 2020).
Form of the opposition
The opposition must include (R613-44-1 CPI):
- The identity of the opponent;
- The references of the patent against which the opposition is filed;
- A statement specifying the extent of the opposition, indicating
- the claims concerned,
- the grounds on which the opposition is based,
- the facts, and
- the evidence relied upon in support of these grounds;
- The proof of payment of the prescribed official fee;
- Where applicable, the appointment of the representative and, unless the representative is an IP representative or an attorney, the power of attorney.
These documents must be provided within the opposition period (R613-44-1 CPI) (except for the appointment of the representative, which we address below).
Filing of the opposition
At this stage, I do not know which means will be authorized for filing the opposition.
Probably the online procedure portal…
Late-filed facts (e.g., publications) and evidence
Based on the wording of the articles governing opposition (indeed, the opponent may only submit observations during the procedure), it appears that the only opportunity for the opponent to present facts and evidence is at the time of filing the opposition.
Therefore, any late-filed document (even those that were not accessible to the opponent on the day of filing the opposition) likely cannot be submitted subsequently.
Harsh, isn’t it?
Especially when we know that the proprietor can amend the claims. Does the opponent not even have the right to respond to these amendments?
Late-filed arguments
This point is not addressed at all by the IPC.
Therefore, we do not know whether it is possible to present new arguments during the proceedings.
New grounds
Similarly, the IPC is silent regarding new grounds.
Can the opponent present new ones? What happens if the proprietor amends their claims?
As you will have gathered, I am not fond of the drafting rigor of the IPC…
Admissibility of the opposition
Principle
Any opposition filed after the 9-month period shall be declared inadmissible (R613-44-2 IPC).
Similarly, an opposition that does not detail, within the time limits:
- the identity of the opponent,
- the references of the patent,
- the extent of the opposition,
- the justification of payment of the official fee
If certain grounds are not sufficiently substantiated (e.g., some facts or evidence are missing), but at least one is correct, the opposition shall be admissible: only the unsubstantiated grounds shall be dismissed (unfounded, R613-44-2 IPC).
The opponent is informed of the irregularities and may contest them (this does not mean they may correct them, R613-44-2 IPC).
If the opponent had not appointed a representative when required to do so, the INPI notifies them and sets a time limit for correction: failing this, the opposition shall be deemed inadmissible (R613-44-2 IPC).
Consequence of inadmissibility
The main consequence is that the opponent will not be able to proceed with their opposition…
Indeed!
As to whether the opposition official fee is refunded, I would tend to say no, since the opposition official fee is not listed under R411-17 IPC.
Consequence of admissibility
In the event of opposition(s), the INPI informs the proprietor without delay (R613-44-6 IPC).
Challenging the patent
Scope / claims under attack
It is possible to challenge a patent in respect of all its claims or only some of them (L613-23-1 IPC).
Grounds
The possible grounds for opposition are (L613-23-1 CPI):
- The subject-matter of the patent is not patentable, i.e.:
- is not considered an invention;
- is not novel;
- does not involve an inventive step;
- is not susceptible of industrial application;
- is excluded from patentability (e.g., surgical method);
- The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- The subject-matter of the patent extends beyond the content of the application as filed or, where the patent has been granted on the basis of a divisional application, the subject-matter extends beyond the content of the initial application as filed.
Simply put, these are the same grounds as before the EPO…
Examination Phase
Principle
The examination phase begins at the end of the opposition period (R613-44-6 CPI).
In general, the procedure is adversarial (R613-44-4 CPI): any document from one of the parties is transmitted to the other parties without delay.
Phase 1: Notification and Collection of the Proprietor’s Response
A time limit is set for the proprietor to submit observations in response or propose amendments to the claims (R613-44-6 CPI).
The proprietor may amend the claims of the patent (L613-23-3 CPI):
- in order to address a ground for opposition raised by the opponent;
- without extending its subject-matter beyond the content of the initial application (including, where applicable, the parent application in the case of a division);
- without extending the scope of protection of the patent;
- ensuring that the new protection is:
- patentable, i.e.:
- constitutes an invention;
- is novel;
- involves an inventive step;
- is susceptible of industrial application;
- is not excluded from patentability (e.g., surgical method);
- clear and concise;
- sufficiently described.
- patentable, i.e.:
What is interesting here is the lack of legal consequence for non-compliance with the conditions of L613-23-3 CPI. Well, at this stage… You might say: yes, but if it is not sufficiently described, the INPI will reject it. Your reasoning is correct:
- if the opponent is allowed to add this ground (which is unclear);
- or if the INPI is empowered to decide on a ground not raised (which is also unclear).
Phase 2: Examination Report by the INPI
No later than 3 months following the expiration of the period granted to the patent proprietor, an examination report, drafted based on elements provided by the parties and detailing the INPI’s analysis, is notified to the parties (R613-44-6 CPI).
From this, it can be understood that the INPI cannot raise certain grounds ex officio?
This notification invites them to submit, within a specified period, observations and is accompanied, where applicable, by the observations or proposed amendments to the claims submitted by the proprietor (R613-44-6 CPI).
Phase 3: Written Submissions
The parties submit their observations (or amendments for the proprietor) within the specified period (R613-44-6 CPI).
These observations are communicated to the other parties upon expiration of the period (R613-44-6 CPI).
Once again, the INPI sets a new period for response (if observations or amendments have been made) (R613-44-6 CPI).
These responses are communicated to the other parties upon expiration of the period (R613-44-6 CPI).
Phase 4: Oral Proceedings
The parties may request to present oral observations (R613-44-6 CPI).
In this case, oral proceedings are organized with the parties (R613-44-6 CPI).
End of the Examination Procedure
The examination procedure concludes (R613-44-8 CPI):
- on the day of the oral proceedings, if held;
- otherwise, upon expiration of the first specified period if no response is provided by the parties,
- otherwise, upon expiration of the second specified period.
The date of the end of the examination procedure is notified to the parties (R613-44-8 CPI).
Final Decision
Principle
The decision, issued at the conclusion of an inter partes procedure, is rendered by the Director of the INPI (L613-23-2 CPI, L613-44-7 CPI).
It would have been desirable for the CPI to specify the elements that may form the basis of the decision:
- the grounds initially raised?
- new grounds raised during the procedure?
- grounds raised ex officio by the office?
In short …
This decision has the same effects as a judgment within the meaning of Article L111-3 of the Code of Civil Enforcement Procedures (L613-23-2 CPI) and is therefore enforceable: this is particularly relevant given that a party may be ordered to bear the costs of the other party …
It should also be noted that, under the SVR principle, the absence of a response from the INPI within 3 months after the examination phase (L613-23-2 CPI together with R613-44-6 CPI), the opposition is deemed to be rejected.
The decision may be (L613-23-4 CPI):
- a total or partial revocation of the patent;
- a maintenance in amended form (i.e., amended by the proprietor);
- a rejection of the opposition.
Effect of the revocation decision
The revocation decision has absolute effect (L613-23-6 CPI).
The decisions are retroactive to the filing date of the patent application (L613-23-6 CPI).
Here, I am not certain I agree with the French approach:
- why does Article L613-23-6 CPI not specify that decisions to maintain in amended form also have absolute effect? Would they only have effect between the parties?
- why was it decided to retroactively apply the decision to the filing date rather than the grant date? One could imagine convoluted arguments such as « There is no extension of scope even if the INPI accepted an amendment during opposition that would do so, because retroactivity to the filing date protects me »…
Case of partial revocation
If the decision is a decision of partial revocation, the proprietor is referred to the INPI to adapt their set of claims (L613-23-6 CPI).
If the adapted set does not comply with the partial revocation decision, the proprietor is informed (R612-73 CPI) and is given a set time period to correct it.
The Director General of the INPI has the power to reject the amended set of claims for failure to comply with the partial revocation decision (L613-23-6 CPI) if the proprietor does not correct their set of claims properly or does not submit observations (R612-73 CPI).
If their observations are not convincing, a new time period will be granted: without adequate correction, the set of claims is rejected (L613-23-6 CPI and R612-73 CPI).
Quite honestly, I do not know what the consequences are of having one’s set of claims rejected… is the patent revoked entirely? It does not seem so…
An action for annulment may be brought against the decision rejecting the set of claims (R612-73-3 CPI).
Publication of the new patent specification
A specification is republished by the INPI if (R613-44-9 CPI):
- the decision that has become final maintains the patent in an amended form;
- if the amended set of claims submitted to the INPI by the patent proprietor complies with the final partial revocation decision.
Allocation and determination of costs
A party may request reimbursement of their costs if equity so requires and within the limits of a scale set by order (L613-23-5 CPI).
Appeals against opposition decisions
It is possible to file appeals for review against opposition decisions (R411-19 CPI): the Paris Court of Appeal (R411-19-1 CPI and D411-19-2 CPI).
Such appeals are suspensive (L411-4 CPI).
Appeals must be filed within 1 month from the date of notification of the decision (R411-21 CPI).
The INPI is not a party to the appeal but may submit written observations (R411-23 CPI).