From April 1, 2020, the INPI implements a new procedure (L411-1 CPI): an opposition to French patents, the issue of which has been published in the BOPI from this date.
Let's take a closer look at how it works.
Composition of the opposition division
At this stage, nothing allows us to know it: examiner? number of members?
The only thing we know is that an examiner who has heard a patent application cannot hear the opposition (R613-44-5 CPI).
However, this examiner can be heard during the opposition proceedings (R613-4-5 CPI) .
Quality of the games
Even if this is not explicit in the texts, the holder seems to be a party to the procedure ... phew!
Anyone can file an opposition (L613-23 CPI) without consideration of interest to act (at least, this condition is not present).
This opponent can be a natural or legal person (R613-44 CPI).
Limitation of the term “any person”
The only limitation to this principle is that the holder himself can not himself oppose his own patent (L613-23 CPI).
Thus, it is entirely conceivable that the opponent is a straw man (ie a nominee who masks the "real" opponent).
For people who do not have their domicile or their headquarters in a member state of the EU or the European Economic Area agreement, they must be represented by a representative (R613-44 CPI).
In the case of joint opposition, a common representative may be appointed (R613-44 CPI).
Transfer of opponent status
At this stage, nothing allows us to say that a transfer of the quality of opponent is possible.
However, according to the principles of civil procedure law, we can 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.
The intervention principle known according to the EPC was not taken up for the French opposition.
Likewise, third party observations during the opposition procedure does not seem possible.
The investigation phase or the 3-month period for the decision to be rendered after the investigation phase are suspended (R613-44-10 CPI) :
- if the 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 formed;
- if the INPI awaits information or elements likely to have an impact on the outcome of the opposition or the situation of the parties;
- if the parties jointly agree to stay the proceedings (for a period of four months renewable twice - only during the investigation phase).
Any suspension decision is notified to the parties (R613-44-10 CPI) .
It is very surprising the condition "action for nullity already pending". What about a nullity action that would occur after the opposition was formed? We risk a certain collision…
Resumption following a suspension
The procedure resumes if (R613-44-11 CPI) :
- the INPI is informed that a decision has been made for the action for claim and that this decision is not subject to appeal;
- the INPI is informed that a decision has been made for the invalidity action and that this decision is not subject to appeal;
- If one of the parties who had jointly requested the suspension requests the resumption.
We can still ask ourselves the question, in the first two cases, what happens if the action is simply abandoned?
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 (R613-44-11 CPI).
The resumption of the procedure is notified without delay to the parties by the INPI, with indication of a resumption date.
Withdrawal of opposition, surrender of patent and automatic prosecution
Withdrawal of all objections
If all the oppositions are withdrawn, the opposition procedure is automatically closed (R613-44-12 CPI).
Withdrawal by one of the opponents
As long as there is at least one opponent, there is no reason to close the opposition (R613-44-12 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.
Renunciation, revocation, expiry of the patent
The opposition procedure is automatically closed (R613-44-12 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, unless the opponent has a legitimate interest in obtaining an opposition decision.
Automatic prosecution of the procedure
In France, the INPI does not have the power to pursue the opposition procedure ex officio, even if the patent is manifestly void.
Deadline for opposition
The time limit for filing an opposition is 9 months (R613-44 CPI) from the publication of the issue statement to BOPI.
Further processing is not applicable to the time limit for 9 months (L612-16 CPI). However, I do not really understand this clarification, given that the continuation of the proceedings is open to the applicant and not to the opponent…
An opposition fee will be required to form the opposition (R613-44-1 CPI) : 600 € (order relating to patent fees published on March 8, 2020).
Form of 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 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 provided within the opposition period (R613-44-1 CPI) (except for the designation of representative, but we will discuss it below).
Filing of the opposition
At this stage, I do not know what means will be authorized to file the opposition.
Probably the online procedure portal…
Late facts (eg publications) and evidence
From the wording of the articles dealing with the opposition (indeed, the opponent can only present observations in the proceedings), it would seem that the only opportunity for the opponent to present facts and evidence is at the time 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?
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.
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…
Admissibility of the opposition
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 (e.g. some facts or documents 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 it: failing this, the opposition is considered inadmissible (R613-44-2 CPI).
Consequence of inadmissibility
The main consequence is that the opponent will not be able to make his opposition ...
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.
Consequence of admissibility
In case of opposition (s), the INPI informs the holder without delay (R613-44-6 CPI).
Measure / claims challenged
It is possible to attack a patent on all of its claims or only on a part (L613-23-1 CPI).
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…
The investigation phase begins at the end of the opposition period (R613-44-6 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.
Phase 1: Information and collection of the holder's opinion
The holder is given a period of time to submit observations in response or propose the modification of his claims (R613-44-6 CPI).
The owner 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).
Phase 2: Notice of instruction 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 (R613-44-6 CPI).
Can we therefore understand that the INPI cannot automatically lift certain grounds?
This notification invites them to submit observations within a specified period and is accompanied, where appropriate, by observations or proposals for modification of the claims submitted by the holder (R613-44-6 CPI).
Phase 3: Written debate
The parties present their observations (or modifications for the holder) within the time limit (R613-44-6 CPI).
These observations are transmitted to the other parties at the end of the period (R613-44-6 CPI).
Once again, the INPI sets a new deadline for response (if comments or modifications have been made) (R613-44-6 CPI).
These responses are sent to the other parties at the end of the period (R613-44-6 CPI).
Phase 4: Oral debate
The parties may request to make oral observations (R613-44-6 CPI).
In this case, an oral procedure is organized with the parties (R613-44-6 CPI).
End of the investigation procedure
The investigation procedure ends (R613-44-8 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 (R613-44-8 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 enforcement procedures ( L613-23-2 CPI) and is therefore enforceable: it makes perfect sense when you know that a 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 (L613-23-2 CPI together R613-44-6 CPI), the opposition is deemed to be rejected.
The decision may 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.
Effect of 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'm not sure I'm in step with the French approach:
- why the article L613-23-6 CPI does not specify that the decisions to maintain the modified form also have absolute effect? Would they only have an effect between the parties?
- why did you choose to retroact to the date of filing of the request and not to the date of issue? One could imagine crooked arguments like “There is no extension of scope even if the INPI accepted an amendment in opposition doing so, because retroactivity to the filing date protects me”…
If the decision is a partial revocation decision, the holder is referred 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.
The director general of the INPI has the power to reject the modified set of claims for failure to comply with the partial revocation decision (L613-23-6 CPI) if the holder does not correct his claim set correctly or does not submit an observation (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 brought (R612-73-3 CPI).
Publication of the new patent specification
A booklet is republished by the INPI if (R613-44-9 CPI) :
- 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.
Allocation and setting of costs
A party may request reimbursement of its costs if equity so requires and within the limits of a scale fixed by decree (L613-23-5 CPI).
Appeal against opposition decisions
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 action, but may submit written observations (R411-23 CPI).