Once the preliminary search report has been issued, it is necessary to respond to it to formally initiate the examination of the application. It is from this point that the grant of a patent may be considered.
Response to the Preliminary Search Report
Principle
Upon its establishment, the preliminary search report is transmitted to the applicant (R612-58 CPI).
The applicant may then take a position on the preliminary search report (R612-59 CPI).
Mandatory Response?
The response is mandatory if the preliminary search report cites prior art (R612-58 CPI), particularly documents coded X, Y, or E that are citable (INPI Examination Guidelines, I-C VIII.5.2.1).
Time Limit
The applicant has a 3-month time limit (renewable once upon request) to file new claims or submit observations (R612-59 CPI).
Sanction for Failure to Respond
In the absence of a response within the time limits, the application is rejected (R612-58 CPI together with L612-12 CPI 9° together with R612-51 CPI) after a notice of impending rejection has been sent to the applicant and a new time limit has been granted.
Amendments
In response to the preliminary search report, the applicant may file new claims (R612-59 CPI) and/or submit observations.
In principle, these amendments are fairly open and do not necessarily need to address an Examiner’s objection (R612-37 CPI).
The applicant may potentially submit several amendments during the open response period (INPI Examination Guidelines, I-C VIII.5.2.1.b).
In any event, the following principles must be observed:
- amendments to the claims must be indicated (R612-60 CPI, paragraph 1): for example, a copy with visible revision marks or a letter precisely indicating the amendments (Order of 19 September 1979 on the filing modalities of patent applications, art. 19);
- the new claims must be supported by the description as filed (L612-12 CPI 8°);
- the description may not be amended (except marginally to bring it into conformity with the claims, R612-60 CPI, paragraph 2, or if there is an irregularity concerning the description, R612-37 CPI) (INPI Examination Guidelines, I-C II.5.4 and INPI Examination Guidelines, I-C VIII.5.2.3).
A minor amendment to the claims (i.e., without substantive impact) will not be considered a response (INPI Examination Guidelines, I-C VIII.5.2.1.b).
Change in Claimed Subject Matter
Principle
If the applicant, following the amendment of the claims mentioned above, decides to completely modify the claimed subject matter (e.g., selection of another invention disclosed in the description), a notification is sent to request payment of a new supplementary search official fee (R612-61 CPI) within a set time limit.
Failing this, the examination continues with the previous set of claims (R612-61 CPI).
Criterion
The applicable criterion to determine whether a new claim fee is due is « are the new claims covered by the earlier claims?« .
If they are more limited, this should not pose a problem (INPI Examination Guidelines, I-C VIII.6.1.a).
A new search will be required if the new claims (INPI Examination Guidelines, I-C VIII.6.1.a):
- constitute a generalization or extend the scope of the initially filed claims
- modify the inventive concept (e.g., a variant not previously claimed)
- include claims of a category (process, product) not previously claimed.
Third-party observations on the preliminary search report
Principle
Once the preliminary search report is published, any third party may submit observations to the INPI regarding the patentability of the invention (L612-13 CPI, paragraph 3).
These observations must be submitted in duplicate, together with « non-patent » documents (R612-63 CPI, paragraph 2).
« Patent » documents must be provided upon request by the INPI within a 2-month period from the invitation.
Time limit
The time limit for third parties to submit their observations is 3 months from the publication of the preliminary search report (R612-63 CPI, paragraph 1).
Applicant’s response
In response to third-party observations, the applicant may file new claims and/or submit observations (L612-13 CPI, paragraph 3) within a 3-month period (extendable once upon request) from receipt of the third-party observations by the applicant (R612-64 CPI).
In principle, these amendments are fairly broad and need not necessarily address an objection raised by the third party (R612-37 CPI).
Failure to respond by the applicant
It appears that there is no penalty for failing to respond to such third-party observations.
I love my legislator…
Analysis of the response to the PSR
Analysis of amendments / observations
The examiner reviews the amendments and observations submitted by the applicant in response to the preliminary search report and, where applicable, in response to third-party observations.
Search for interfering patent applications
This search is left to the examiner’s discretion: no systematic search for interference is conducted after the initial search (INPI Examination Guidelines, I-C VIII.3.2).
Procedure in case of new irregularities
These new irregularities may arise, in particular (INPI Examination Guidelines, I-C VIII.6.1.c):
- from the search for interfering patent applications conducted by the examiner;
- from documents cited by the applicant;
- from a new document raised in a third-party observation.
A new supplementary preliminary search report is then issued: the same procedure as for the PSR is followed (INPI Examination Guidelines, I-C VIII.6.2).
Procedure in case of persistent irregularities
Formal notice and time limit
The INPI sends a formal notice to the applicant in order to grant a new time limit of 2 months to correct the application:
- if the application still contains a formality defect (e.g., margin, page numbering, font size, etc.) or if a formality defect was introduced when responding to the RRP (R612-46 CPI);
- if the applicant has not paid an official fee (e.g., claim fees following the submission of a new set of claims) (R612-46 CPI);
- if the application is a divisional application, and if the content of the application extends beyond the content of the parent application (R612-47 CPI);
- if the application is not unitary (R612-48 CPI);
- if the claimed subject-matter is not patentable (R612-49 CPI together with L612-12 CPI 4°);
- if the claimed subject-matter is not an invention (R612-49 CPI together with L612-12 CPI 5°);
- if the application does not enable a search to be carried out (e.g., new claims not clear) (R612-49 CPI together with L612-12 CPI 6°);
- if the claims are not based on the description (R612-49 CPI together with L612-12 CPI 5°);
- if the applicant does not submit amendments in response to the RRP within the time limit (R612-51 CPI together with L612-12 CPI 7°) where lack of novelty was raised;
- if the applicant has not responded to the RRP (i.e., submission of amendments or observations) (R612-51 CPI together with L612-12 CPI 9°).
Failure to respond to this formal notice
In the absence of a response to this formal notice, the application is refused, as the case may be, under:
- R612-46 CPI paragraph 3;
- R612-47 CPI paragraph 3;
- R612-48 CPI paragraph 2;
- R612-49 CPI paragraph 2;
- R612-51 CPI, paragraph 3.
A request for further processing may then be filed by paying the prescribed official fee (R612-52 CPI).
Satisfactory response to the formal notice
Nothing to report: all is well for you… the grant of a patent is approaching!
Unsatisfactory response to the formal notice
Rejection
If the application contains a formal irregularity and the response provided was not satisfactory to the INPI, the application will be rejected (R612-46 CPI, paragraph 3).
The applicant has a period of 2 months to file a request for further processing, accompanied by the corresponding official fee (R612-52 CPI).
The same applies (R612-49 CPI paragraph 2):
- if the claimed subject matter is not patentable (see L612-12 CPI 4°);
- if the claimed subject matter is not an invention (see L612-12 CPI 5°);
- if the application does not enable a search to be carried out (e.g., new claims not clear) (see L612-12 CPI 6°);
- if the claims are not supported by the description (see L612-12 CPI 5°).
Curiously, for these last 4 cases, the INPI guidelines indicate that a notification of a rejection decision is sent prior to rejection (INPI Examination Guidelines, I-E 2.2.2.C). However, this is not what I read in the statute… After all, nothing prevents the INPI from being more flexible than what the law provides.
Draft rejection decision then rejection
In other cases, a draft rejection decision will be notified to the applicant, granting a new time limit to respond by amending the application, respectively under the following articles:
- R612-47 CPI paragraph 4;
- R612-48 CPI paragraph 3;
- R612-51 CPI, paragraph 3.
This draft decision is reasoned and cites the appropriate legal bases (INPI Examination Guidelines, I-E 2.3).
In the absence of a satisfactory response, the application is rejected.
Procedure in case of persistent (but partial) irregularities
Principle
It may happen that the patent application is only partially irregular (R612-50 CPI).
This is notably the case when certain passages of the description are contrary to public policy or morality (L611-17 CPI), relate to processes for cloning human beings or modifying the human genome (L611-18 CPI), or other exclusions from patentability (L611-19 CPI).
This is also the case when the application contains partial formal irregularities (L612-1 CPI).
Time limit
The notification sets a time limit for bringing the application into conformity with the requirements of the preceding articles (R612-50 CPI, paragraph 2).
Proposed deletions
The notification specifies the deletions proposed to bring the application into conformity (R612-50 CPI, paragraph 2).
Sanction in case of no response
In case of no response or if the response is not satisfactory, the deletions indicated in the notification are made ex officio (R612-50 CPI, paragraph 3).
Grant envisaged
Invitation to pay the grant and printing official fees
Principle
When the INPI considers that the application is in order for grant (i.e., there are no longer any grounds for refusal), a notification is sent to the applicant inviting them to pay the official fees for grant and printing of the document (R612-70 CPI).
Once payment has been made, the applicant is informed of the grant of their title, with an indication of the date and number of the Official Bulletin of Industrial Property in which the grant will be published (INPI Examination Guidelines, I-G 1).
Amount
This official fee, covering both the printing and the grant of the document, is [montant_epo default= »90 € » name= »INPI – Grant and printing of the specification »] (Order of April 24, 2008 on official fees for procedures collected by the INPI, Annex).
Time limit
The notification specifies a time limit within which the applicant must pay these fees (R612-70 CPI).
Sanction
If the official fee is not paid within the specified time limit, the application is refused (R612-46 CPI).
The applicant has a 2-month period to file a request for further processing, accompanied by the corresponding fee and the official fee for grant and printing (R612-52 CPI).
Grant decision
Once this official fee has been paid, the Director General of the INPI issues a decision to grant the patent (R612-70 CPI, paragraph 1).
Grant decisions may be appealed before the Paris Court of Appeal (D411-19-1 CPI, by way of exception to R411-19 CPI) within a 1-month period (or 3 months if the appellant is not domiciled in France, R411-20 CPI) from the date of the decision.
Correction of the specification
If the specification contains an error, the applicant may inform the INPI: an erratum will be published in the BOPI (INPI Examination Guidelines, I-B VI.2).
This correction must be made within 4 months from the date of the grant decision (Council of State, Ternon ruling, October 26, 2001, No. 197018 and INPI Examination Guidelines, I-B VI.2).