Very soon, INPI will introduce a new procedure (L411-1 CPI): opposition to French patents.
Let's take a closer look at how it works.
Chapter 1. Composition of the opposition division
At this stage, nothing allows us to know it: examiner? number of members?
The only thing that we know is that an examiner who has examined a patent application cannot hear the opposition (R613-44-11 CPI).
However, this examiner can be heard during the opposition procedure (R613-4-11 CPI).
Chapter 2. Quality of the parties
Section 2.1. Holder
Even if this is not explicit in the texts, the holder seems to be a party to the procedure & #8230; phew!
Section 2.2. opposing
2.2.1. Every person
Anyone can file an opposition (L613-23 CPI) without considering interest in acting (at least, this condition is not present).
It is quite possible to make joint oppositions (R613-44 CPI) or to have several oppositions on the same patent (in this case, the oppositions will be joined, R613-44-3 CPI).
This opponent can be a natural or legal person (R613-44 CPI).
2.2.2. Limitation of the term “any person”
The only limitation to this principle is that the holder himself cannot oppose his own patent himself (L613-23 CPI).
2.2.3. Straw man
Thus, it is entirely conceivable that the opponent is a straw man (ie a nominee who masks the & #8220; real & #8221; opponent).
For people who are not domiciled or have their seat in a member state of the EU or of the agreement on the European Economic Area, they 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)
2.2.5. Transfer of opponent status
At this stage, nothing allows us to say that a transfer of the quality of the opponent is possible.
However, according to the principles of civil procedure law, we may legitimately think that a transfer is possible in the event:
- of hereditary succession ;
- of universal succession (e.g. merger of legal person);
- of partial succession (ie transfer of a department) if the opposition had been made in the interest of the transferred party.
Section 2.3. speaker
The principle of intervention known according to the EPC was not taken up for the French opposition.
Likewise, third party observations during the opposition proceedings does not seem possible.
Chapter 3. Suspension
Section 3.1. Principle
The investigation phase or the 3-month period for the decision to be rendered after the investigation phase are suspended (R613-44-7 CPI):
- if INPI is informed that a property claim action is in progress (the information must come from the person who initiated the action);
- if an action for a declaration of invalidity is already pending when the opposition is brought up;
- if INPI awaits information or elements likely to affect the outcome of the opposition or the situation of the parties;
- if the parties agree & #8217; jointly suspend the proceedings (for a period of four months renewable twice & #8211; only during the phase of & #8217; instruction).
Any suspension decision is notified to the parties (R613-44-7 CPI).
Section 3.2. Resumption following a suspension
The procedure resumes if (R613-44-8 CPI):
- l & #8217; INPI is informed that & #8217; a decision has been made for the & #8217; claim action and that this decision is not subject to appeal (what happens if the & # TP38217; claim action has simply been abandoned? & #8230; )
- l & #8217; INPI is informed that & #8217; a decision has been made for the action in nullity and that this decision is not subject to appeal (what happens if the action in nullity has simply been abandoned? & #8230; )
- If one of the parties who had jointly requested the suspension requests the resumption.
When the opposition proceedings are resumed, if the scope of the patent has been changed (typically for an action for a declaration of invalidity for which there has been a judicial limitation), the opponent is invited to specify again the scope of his opposition (R613-44-8 CPI).
The resumption of the procedure is notified without delay to the parties by the INPI, with indication of a resumption date.
Chapter 4. Withdrawal of opposition, waiver of patent and automatic prosecution
Section 4.1. Withdrawal of all oppositions
If all the oppositions are withdrawn, the opposition procedure is closed from office (R613-44-9 CPI).
Section 4.2. Withdrawal by one of the opponents
As long as #8217; there is at least one opponent, there is no reason to close the opposition (R613-44-9 CPI).
However, it is difficult to know what happens if one of the opponents who has filed a joint opposition decides to withdraw from the opposition.
Section 4.3. Waiver, revocation, lapse of patent
The opposition procedure is closed from office (R613-44-9 CPI) if:
- the holder renounces the claims which are the object of the opposition;
- the patent is declared invalid by a court decision (eg action for nullity in parallel);
- the effects of the patent have ceased.
Regarding this last point, I am quite skeptical: indeed, an opponent can seek the retroactive effect of an opposition. So why deprive him of seeking this effect via opposition?
Indeed, we know that the extinction of a patent only has #8217; an ex tunc effect (for the future).
Furthermore, if we have to draw a parallel with the European procedure, it is quite possible, on request, to pursue the opposition.
Section 4.4. Automatic prosecution of the procedure
In France, INPI does not have the power to pursue the opposition proceedings ex officio, even if the patent is clearly void.
Chapter 5. Formal aspects
Section 5.1. Deadline for opposition
The time limit for filing an opposition is 9 months (L613-23 CPI) from the publication of the issue statement to the BOPI.
The continuation of proceedings n & #8217; is not applicable to the period of 9 months (L612-16 CPI). However, I do not fully understand this clarification, given that the continuation of the proceedings is open to the applicant and not to the & #8217; opponent & #8230;
Section 5.2. Opposition fee
An opposition fee will be required to form the opposition (R613-44-1 CPI), but I do not know the amount at this stage.
Section 5.3. Form of opposition
L & #8217; 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 scope of the opposition, stating
- the claims referred to,
- the grounds on which the opposition is based,
- the facts and
- the exhibits relied on in support of these reasons;
- The justification for the payment of the prescribed fee;
- Where appropriate, the designation of the representative and, unless he has the status of industrial property attorney or lawyer, the power.
These documents must be supplied within the opposition period (R613-44-1 CPI) (except for the designation of agent, but we will address them below).
Section 5.4. Filing of opposition #8217;
At this stage, I do not know what means will be authorized to file the opposition.
Probably the online procedure portal & #8230;
Section 5.5. Late facts (eg publications) and evidence
According to the wording of the articles dealing with the opposition (indeed, the opponent can only submit observations in the proceedings), it would seem that the only opportunity for the opponent to present facts and evidence is at the time the formation of the opposition.
Consequently, any late document (even those which were not accessible to the opponent on the day of the opposition's formation) probably cannot be presented later.
Severe isn't it?
Especially when we know that the holder can modify his claims. Does the opponent not even have the right to react to these changes?
Section 5.6. Late arguments
This point is absolutely not addressed by the CPI.
We therefore do not know whether it is possible to present new arguments during the proceedings.
Section 5.7. New patterns
Likewise, the IPA is silent on the new grounds.
Can the opponent present new ones? what happens if the holder changes their claims?
You will understand, I do not like the rigor of drafting of the CPI…
Chapter 6. Admissibility of the opposition
Section 6.1. Principle
Any opposition formed after the period of 9 months is declared inadmissible (R613-44-2 CPI).
Similarly, an objection is inadmissible which does not detail, within the time limits:
- the identity of the opponent,
- patent references,
- the scope of the opposition,
- the justification for the payment of the fee.
If certain reasons are not sufficiently substantiated (eg some facts or parts are missing), but at least one is correct, the opposition will be admissible: only the unsubstantiated reasons will be rejected (unfounded, R613- 44-2 CPI).
The opponent is informed of the irregularities and he can contest them (this does not mean that he can correct them, R613-44-2 CPI).
If the opponent had not appointed a representative when he had to, the INPI warns him and gives him a deadline to correct: failing this, the opposition is considered inadmissible (R613-44-2 CPI).
Section 6.2. Consequence of inadmissibility
The main consequence is that the opponent will not be able to object…
As for the question of whether the opposition fee is reimbursed, I would tend to say no because the opposition fee is not listed under R411-17 CPI.
Section 6.3. Consequence of admissibility
In case of opposition (s), the INPI informs the holder without delay (R613-44-5 CPI)
Chapter 7. Invoking the patent
Section 7.1. Measure / claims challenged
It is possible to attack a patent on all of its claims or only on a part (L613-23-1 CPI)
Section 7.2. reasons
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 new;
- is not inventive;
- has no industrial application;
- is excluded from patentability (eg surgical method);
- The patent does not expose the invention clearly and completely enough for a person skilled in the art to be able to execute it;
- The subject-matter of the patent extends beyond the content of the application as filed or, when 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.
To put it simply, these are the same reasons as before the EPO…
Chapter 8. Instruction phase
Section 8.1. Principle
The investigation phase begins at the end of the opposition period (R613-44-5 CPI).
In general, the procedure is contradictory (R613-44-4 CPI): any document from one of the parties is transmitted to the other parties without delay.
Section 8.2. Phase 1: Information and collection of the holder's opinion
The holder is given a deadline to submit observations in response or to propose the modification of his claims (R613-44-5 CPI).
The holder can modify the claims of his patent (L613-23-3 CPI):
- in order to react to a ground for opposition raised by the opponent;
- without extending its object beyond the initial request (including, where applicable, the parent request in the event of division);
- without extending the scope of patent protection;
- ensuring that the new protection is:
- patentable, i.e. :
- either an invention;
- be new;
- be inventive;
- has industrial application;
- is not excluded from patentability (eg surgical method);
- clear and concise;
- sufficiently described.
- patentable, i.e. :
What is interesting here is the lack of legal consequence to non-compliance with the conditions of L613-23-3 CPI. Finally, at this stage ... You will tell me: yes, but if it is not sufficiently described, the INPI will reject. Your reasoning is correct:
- if the opponent is authorized to add this reason (which is not clear);
- or if the INPI is empowered to take a decision on a reason not raised (it is not clear either).
Section 8.3. Phase 2: Instruction notice by the INPI
Later 2 months following the expiration of the period allotted to the patent holder, a notice of instruction, drawn up on the basis of elements provided by the parties and detailing the analysis of the INPI, is notified to the parties (R613-44-5 CPI ).
Can we therefore understand that the INPI cannot automatically lift certain grounds?
This notification invites them to submit observations within a given period and is accompanied, where appropriate, by observations or proposals for modification of the claims presented by the holder (R613-44-5 CPI).
Section 8.4. Phase 3: Written debate
The parties present their observations (or modifications for the holder) within the time limit (R613-44-5 CPI).
These observations are sent to the other parties at the end of the period (R613-44-5 CPI).
Once again, the INPI sets a new deadline for response (if comments or modifications have been made) (R613-44-5 CPI).
These responses are sent to the other parties at the end of the period (R613-44-5 CPI).
Section 8.5. Phase 4: Oral debate
The parties may request to present oral observations (R613-44-5 CPI).
In this case, an oral procedure is organized with the parties (R613-44-5 CPI).
Section 8.6. End of the instruction procedure
The investigation procedure ends (R613-44-6 CPI):
- the day of the oral presentation, if it takes place;
- otherwise at the expiration of the first time limit if no response is provided by the parties,
- otherwise at the expiration of the second time limit.
The date of the end of the investigation procedure is notified to the parties (R613-44-5 CPI).
Section 8.7. Final decision
The decision, taken at the end of an adversarial procedure, is made by the director of the INPI (L613-23-2 CPI).
It would have been desirable for the IPA to indicate the elements which can justify the decision:
- than the reasons originally raised?
- new grounds raised during the proceedings?
- reasons 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 execution procedures (L613-23-1 CPI) and its therefore enforceable: it takes all its sense when we know that one party may be ordered to bear the costs of the other party ...
It should also be noted that, according to the SVR principle, the lack of response from the INPI during 3 months after the investigation phase (R613-44-6 CPI), the opposition is deemed to be rejected.
This poses an idiotic problem: the lack of responsiveness of the INPI can lead to preventing the opponent from taking legal action on the basis of the same grounds for invalidity (R615-1 A CPI).
The decision can be (L613-23-4 CPI):
- total or partial revocation of the patent;
- maintenance in modified form (ie modified by the holder);
- rejection of the opposition.
8.7.2. Effect of revocation decision
The revocation decision has absolute effect.
The decisions are retroactive to the filing date of the patent application (L613-23-6 CPI).
Here, I am not sure that I am in line with the French approach: why does article L613-23-6 CPI not specify that decisions to keep in modified form also have absolute effect? Would they only have an effect between the parties?
8.7.3. Partial revocation
If the decision is a partial revocation decision, the holder is sent back to the INPI to adapt his claim set (L613-23-6 CPI).
If the adapted game does not comply with the partial revocation decision, the holder is informed (R612-73 CPI) and has a time limit to correct it.
The director general of the INPI has the power to reject the modified set of claims for lack of conformity with the partial revocation decision (L613-23-6 CPI) if the holder does not correct his claim set correctly or does not present of observation (R612-73 CPI).
If his observations are not convincing, a new deadline will be set: without adequate correction, the claim set is rejected (L613-23-6 CPI and R612-73 CPI).
Quite honestly, I don't know what it means to have your claim set rejected… is the patent revoked completely? He does not seem …
An action for annulment against the decision to reject the claim set may be initiated (R612-73-3 CPI).
8.7.4. Publication of the new patent specification
A booklet is republished by the INPI if
- the decision which has become final maintains the patent in an amended form;
- if the set of modified claims presented to the INPI by the patent holder complies with the partial revocation decision which has become final.
8.7.5. Allocation and setting of costs
The winning party may request reimbursement of its costs by the opposing party within the limits of a scale fixed by decree (L613-23-5 CPI).
Quite honestly, I don't know who is the “winning party” when the patent is maintained in modified form…
Chapter 9. Appeal against decisions of opposition #8217;
It is possible to appeal against the decisions of opposition (R411-19 CPI): the Paris Court of Appeal (R411-19-1 CPI and D411-19-2 CPI) then becomes competent in law and in fact (R411-19 CPI).
These appeals are suspensive (L411-4 CPI).
Appeals must be brought under 1 month from the notification of the decision (R411-21 CPI).
The INPI is not a party to the appeal, but may submit written observations (R411-23 CPI).