Filing Requirements

While obtaining a filing date is relatively straightforward, this does not mean there are no other filing requirements.

Filing Requirements

Provision of the Translation of the Application

Requirements

A translation must be provided:

• The description is not drafted in French (R612-21 CPI, paragraph 2):
  • The INPI informs the applicant of this fact and requests the translation to be provided within a 2-month period (R612-21 CPI, paragraph 2);
  • The wording of R612-21 CPI is not entirely clear as to whether this period runs from the notification or the filing date (however, INPI notifications state that this period runs from the receipt of the notification);

• The patent application was filed by means of a reference, which is not drafted in French (R612-8 CPI, paragraph 5):
  • The period for providing this translation is 2 months (R612-8 CPI, paragraph 5) from the filing date.

Sanction

If no translation is provided within this period, the application is refused (R612-45 CPI, 1°).

The refusal decision is notified to the applicant, who has a 2-month period from the date of receipt of the notification to submit observations (R612-45 CPI, paragraph 4).

These periods may be subject to reinstatement: the request for reinstatement must be filed within 2 months from the cessation of the impediment, but no later than 1 year from the expiration of the missed period (L612-16 CPI). The omitted acts must be completed within this period.

Provision of the Request for Grant

Requirements

A request for grant must be filed (R612-3 CPI) using the form provided by the INPI (Decision 2005-469 of the INPI Director General).

This request must be signed by the applicant or the representative (R612-10 CPI) and must include:

• the fact that a patent is sought;
• the title of the invention:
  • it must be clear and concise;
  • for technical reasons, it must not exceed 200 characters and spaces (INPI Examination Guidelines, I-C I.1);
  • it must indicate the technical designation of the invention;
  • it must not include a fanciful designation;
• the designation of the inventor:
  • even though this designation may in fact be made on a separate sheet if the applicant is not the inventor or the sole inventor;
• the name and first names of the applicant, their nationality, domicile or registered office;
  • if it is a natural person, no pseudonym, title, etc. should be mentioned (INPI Examination Guidelines, I-B II.3.5);
  • if it is a legal entity, the corporate name or business name, legal form, SIREN number, and APE code should be mentioned, excluding any other information such as trade name or commercial name (INPI Examination Guidelines, I-B II.3.5);
  • Companies in the process of formation are represented by a founding partner (INPI Examination Guidelines, I-B II.3.5), and a statement such as « Mr./Ms. X, acting in the name and on behalf of company Y in the process of formation » should be included. Once the company is incorporated, it must take over the filing made by the founder and request the recording of this change in the National Register of Patents by providing an excerpt from the trade and companies register (Kbis) and a copy of the deed effecting the takeover of the filing;
• the name and address of the representative, if one has been appointed.

The request may also include (R612-11 CPI) the following information:

• the reduction in the official fees granted to or requested by the applicant;
• earlier filings from which elements may have been incorporated;
• claimed priorities;
• the presentation of the invention at an official or officially recognized exhibition.

Sanction

In the event of the absence of a request or a non-compliant request, a notification is sent to the applicant, who then has a set time limit to provide a compliant request for grant (L612-12 CPI together with R612-46 CPI).

Failing this, the application is rejected (R612-46 CPI).

The applicant may then file a request for further processing within a period of 2 months from the notification of the rejection decision (R612-52 CPI; a further processing fee must be paid, and the omitted act must be completed within this period).

Furnishing of claim(s)

Requirements

As we saw in the article « Obtaining a filing date« , claims are no longer required to obtain a filing date with the INPI.

However, they must still be furnished for the remainder of the procedure, particularly for the search (R612-3 CPI, 2°).

Sanction

In the absence of a claim, a notification is sent to the applicant, who then has a set period to provide at least one claim (L612-12 CPI together with R612-46 CPI).

If not, the application is refused (R612-46 CPI).

The applicant may then file a request for further processing within a period of 2 months from the notification of the refusal decision (R612-52 CPI; a further processing fee must be paid and the omitted act must be completed within this period).

If the number of claims exceeds 10

Principle

If the number of claims exceeds 10, the applicant must pay the INPI an additional official fee for each claim exceeding this number (i.e., from the 11th claim) (R411-17 CPI, 1°).

This official fee is [montant_epo default= »42 € » name= »INPI – claim fee, either at the time of filing or following amendment, from the eleventh claim »] for each claim from the 11th onward (Order of 24 April 2008 on official fees for procedures collected by the INPI, Annex).

Deadlines

This official fee is normally due upon filing or amendment of new claims.

Sanction

If the applicant does not pay, a notification is sent to the applicant (R612-46 CPI, paragraph 1), setting a set period to pay this official fee.

If not, the application is refused (R612-46 CPI, paragraph 3).

Provision of the abstract

Requirements

An application must contain an abstract (R612-3 CPI, 3°).

Form

The abstract must state the title of the invention and include a concise summary of the disclosure in the application (Order of 19 September 1979 on the modalities for filing patent applications, Article 15).

The applicant also proposes the drawing they wish to have published with the abstract (Order of 19 September 1979 on the modalities for filing patent applications, Article 16), but the INPI may choose another if it wishes (Article 9, Decision 2018-156 of the Director General of the INPI): oddly, in this case, the INPI sends a notification entitled « irregularity notification » with a proposed correction, which is deemed accepted after 2 months under R612-46 CPI (I don’t see how this is an irregularity, but okay)…

The abstract must not exceed 150 words when accompanied by a drawing and 250 words otherwise (Article 9, Decision 2018-156 of the Director General of the INPI).

The abstract must include references to the accompanying drawings, where relevant (Order of 19 September 1979 on the modalities for filing patent applications, Article 16).

Sanction

In the event of a missing or non-compliant abstract, a notification is sent to the applicant, who then has a set time limit to provide a compliant abstract (L612-12 CPI together with R612-46 CPI).

Failing this, the application is rejected (R612-46 CPI).

The applicant may then file a request for further processing within a 2-month period from the notification of the rejection decision (R612-52 CPI; a further processing official fee must be paid and the omitted act must be completed within this period).

Payment of filing and search official fees

Requirements

The filing and search official fees must be paid within a 1-month period from the filing (R612-5 CPI).

Amount

The amount of the filing official fee is set at (Order of 24 April 2008 on official fees for procedures collected by the INPI, Annex):

• [montant_epo default= »36 € » name= »INPI – filing in paper form »] for a paper filing;
• [montant_epo default= »26 € » name= »INPI – electronic filing »] for an electronic filing.

The amount of the search official fee is set at (Order of 24 April 2008 on official fees for procedures collected by the INPI, Annex):

• [montant_epo default= »520 € » name= »INPI – Search report »] for a standard search;
• [montant_epo default= »156 € » name= »INPI – Search report if equivalent report »] for a search if the application is a foreign priority application accompanied by a search report recognized as « equivalent » by the INPI Director General, i.e.:
  • under priority of a Swiss application (Decision 92-286 of the INPI Director General), if the content is identical and if the search report is provided at the time of paying the search official fee;
  • under priority of a Dutch application (Decision 92-287 of the INPI Director General), if the content is identical and if the search report is provided at the time of paying the search official fee;
  • under priority of a Belgian application (Decision 96-408 of the INPI Director General) if the content is identical and if the search report is provided at the time of paying the search official fee.

Reduction of official fees

A reduction of official fees is provided if the applicant is (L612-20 CPI together with R613-63 CPI):

• a natural person;
  • the reduction is granted as of right and no supporting document is required;
• an SME with fewer than 1,000 employees, whose capital is not held more than 25% by an entity that does not meet these initial conditions;
  • it is necessary to provide, within 1 month from the filing date of the patent application, a written request for reduction and a sworn statement of eligibility for this category, dated and signed by the legal representative (INPI Examination Guidelines, II-B 2);
• a non-profit organization (NPO) in the field of education or research:
  • it is necessary to provide, within 1 month from the filing date of the patent application, a written request for reduction and a copy of the articles of association (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 with Order of April 24, 2008 on official fees for procedures collected by the INPI, Art 2):

• the filing official fee;
• the search official fee:
  • unless the application is a foreign priority application accompanied by a search report recognized as « equivalent » by the INPI Director General.

In my opinion, the date/signature requirements are ultra vires: only the INPI Examination Guidelines mention them, and I do not see how the INPI could refuse a written declaration that does not meet these criteria. I have even heard that the INPI would request the original document… any legal basis to point me to?

Sanctions

Otherwise, the application is rejected (R612-45 CPI, 2°).

The applicant has a period of 2 months from the date of receipt of the rejection notification to pay the corresponding official fee plus a surcharge (i.e., 50% of the unpaid official fee, R612-45 CPI, 2° and Order of April 24, 2008 on official fees for procedures collected by the INPI, Annex): if nothing is done, the rejection becomes final.

The 1-month and 2-month deadlines benefit from reinstatement: the request must be filed within 2 months from the cessation of the impediment, but no later than 1 year from the expiration of the missed deadline (L612-16 CPI). The omitted acts must be completed within this period.

Designation of the inventor

Requirements

It is necessary, at the time of filing, to designate the inventor(s) (L611-9 CPI together with R612-10 CPI 3°), natural person(s).

However, it remains possible to designate inventors within 16 months from the earliest claimed priority (R612-11 CPI, paragraph 2).

Non-publication

The inventor may object to the publication of their name on the patent application / on the patent (R611-16 CPI): the applicant then submits to the INPI a waiver signed by the inventor.

The INPI will not mention their name on the application if the non-publication request is received before the completion of technical preparations for publication (INPI Examination Guidelines, I-B II.4.4).

Correction

A correction of inventor may be requested.

This correction may be made at any time, even after grant (in the latter case, an entry in the National Register of Patents (RNB) must be requested, INPI Examination Guidelines, I-B II.4.3).

Corrections may include:

• The addition of an inventor (R611-16 CPI):
  • either upon request by the applicant or the proprietor of the title or with their consent (R611-16 CPI, paragraph 1);
  • or upon request by a third party producing a final judgment recognizing their right to be designated (R611-16 CPI, paragraph 2);
• The removal of an incorrectly designated inventor (R611-17 CPI):
  • Their written consent is then required.

Sanction in case of failure to designate or irregularities

If no designation is made at the time of filing, the INPI sends a notification accompanied by a « designation of inventor(s) » form to the applicant (R612-11 CPI, paragraph 6, and INPI Examination Guidelines, I-B II.4.1), allowing them to designate inventors within a period of 16 months from the earliest claimed priority.

If no designation is made within this 16-month period, a decision of refusal is notified to the applicant (R612-45 CPI).

The applicant then has a period of 2 months from the date of receipt of the notification to submit observations (this is not a period for rectification), particularly if the designation did in fact take place.

The 16-month period also benefits from a restoration procedure: this request must be filed within 2 months from the cessation of the impediment, but no later than 1 year from the expiration of the missed deadline (L612-16 CPI). The omitted acts must be completed within this period.

Sanction in case of incorrect designation

If « Mickey Mouse » is designated as the inventor, it does not appear that the INPI may refuse the application: the INPI does not verify the accuracy of this information (R611-15 CPI) and no sanction is then incurred.

Priority claim

Requirements for the priority declaration

If a priority claim is made, a priority declaration must be submitted (L612-7 CPI, paragraph 1).

This declaration includes (R612-24 CPI, paragraph 1):

• the filing date;
• the State in which the filing was made;
  • The State is a State party to the Paris Convention or a member of the WTO or a State granting an equivalent right of priority for French applications (L611-12 CPI);
• the filing number.

Multiple priority claims may be made (L612-7 CPI, paragraph 2).

This declaration must be completed at the time of filing or:

• within a period of 16 months from the earliest priority date claimed (for an addition, R612-24 CPI, paragraph 2).
• within a period of 16 months from the earliest date among (for a correction, R612-24 CPI, paragraph 3):
  • the earliest priority date before correction, and
  • the earliest priority date after correction;
• within a period of 4 months from the filing date (for a correction, R612-24 CPI, paragraph 3).

However, these time limits no longer apply if a request for early publication is submitted under Article L612-21 CPI, 1° (R612-24 CPI, paragraph 4).

Furthermore, these time limits are not subject to reinstatement or further processing requests.

Requirement to provide a copy

Principle and time limit

A copy of the priority document must also be provided (L612-7 CPI, paragraph 1, together with R612-24 CPI, paragraph 5) within a period of 16 months from the priority date (this time limit is not affected by early publication, a priori).

This time limit is subject to reinstatement: the request must be submitted within 2 months from the cessation of the impediment, but no later than 1 year from the expiry of the unobserved time limit (L612-16 CPI). The omitted acts must be completed within this period.

Format of the copy

Before January 1, 2009, the copy of the application had to be certified by the authority that received the earlier application and accompanied by a certificate from that authority indicating its filing date.

However, this requirement no longer applies.

A simple printout/photocopy therefore appears to be sufficient.

Requirement to provide authorization to claim priority

If the applicant is not the same in the priority application, the copy must be accompanied by written authorization from the proprietor of the earlier application to claim priority (R612-24 CPI, paragraph 5), and, where applicable, a translation of this authorization if it is not in French, English, or German (Order of September 19, 1979 on the filing procedures for patent applications, Article 20 and Article 9, Decision 2018-156 of the Director General of the INPI).

Sanction

If one of the previous requirements is not met, the priority is declared inadmissible (R612-24 CPI, paragraph 6).

Only the time limit for providing the copy of the priority document benefits from a restoration remedy: this remedy must be filed within 2 months from the cessation of the impediment, but no later than 1 year from the expiration of the unobserved time limit (L612-16 CPI). The omitted acts must be completed within this time limit.

Provision of a translation of the priority document?

The INPI may require a translation of the part of this copy that contains the filing date and the number of the foreign application, as well as the indication of the State in which or for which it was filed (Order of September 19, 1979 on the filing procedures for patent applications, Article 20 and Article 9, Decision 2018-156 of the Director General of the INPI).

Nevertheless, do not be surprised if the INPI issues a notice of irregularity to require this translation (personally, I believe this is an absurdity since, formally, no irregularity exists).

Clarification regarding the loss of the right of priority / waiver

It is entirely possible to waive or withdraw a priority (this principle, although not provided for in the code, is derived from the possibility of total or partial withdrawal of the application under L613-24 CPI according to the INPI Examination Guidelines, I-B II.5.6).

The time limits (only those not expired, INPI Examination Guidelines, I-B II.5.6.b) are then recalculated from the new effective date of the application.

Furthermore, publication is delayed if the withdrawal occurs before the start of the technical preparations necessary for publication (INPI Examination Guidelines, I-B II.5.6.a).

Claiming

Sanction

The request for the benefit of the filing date of a prior French application is inadmissible if the requirements mentioned above (excluding those concerning the submission of the copy) are not met.

A notice of irregularity is sent to the applicant when (R612-46 CPI):

• the applicant is not the proprietor of the prior application or its successor in title,
• the copy of the prior application has not been provided,
• the incorporated elements have not been highlighted on the copy of the prior application.

A time limit is set for the applicant to correct this irregularity. Failing rectification within the set time limit, the patent application is refused (R612-46 CPI).

The applicant may then file a request for further processing within a period of 2 months from the notification of the refusal decision (R612-52 CPI, a further processing fee must be paid and the omitted act must be completed within this period).

Appointment of a representative

Requirements

While the filing may be made by the applicant themselves, the applicant may need to appoint a representative for the remainder of the procedure (R612-2 CPI).

The applicant must appoint a representative within 2 months following the filing if the applicant has neither their domicile, registered office, nor an establishment in France or in another Member State of the European Union or the European Economic Area (R612-2 CPI, paragraph 2).

The representative may be:

• an IP representative (title regulated by Article L422-1 CPI) with the designation « patent » (L422-4 CPI together with L422-1 CPI, last paragraph);
• an attorney;
• a person registered on the special list of Article L422-5 CPI (specialist benefiting from the « grandfather » clause, few remain);
• a company or public establishment with which the applicant has a contractual relationship;
• a specialized professional organization;
• a foreign representative domiciled in a Member State of the EU or the EEA and authorized to act in that state (if acting before the INPI on an occasional basis).

Documents to be provided by the representative

IP representatives and attorneys do not need to justify their status and do not require a power of attorney (R612-2 CPI, paragraph 3 and INPI Examination Guidelines, I-B II-2.3): they must only indicate their status (providing the CPI number is a plus, facilitating verification by the INPI).

Persons registered on the special list of Article L422-5 CPI do not need to justify their status but must provide a power of attorney (INPI Examination Guidelines, I-B II-2.3).

The company or public establishment must specify the necessary contractual relationship. It must also provide a power of attorney (INPI Examination Guidelines, I-B II-2.3).

Specialized professional organizations must demonstrate that the applicant is one of their members and provide the power of attorney conferred on them by the latter (INPI Examination Guidelines, I-B II-2.3).

Professionals from a Member State of the European Union or the European Economic Area must submit a certificate issued by the Industrial Property Office before which they are authorized to represent third parties. This certificate may be submitted once and for all to the INPI service (INPI Examination Guidelines, I-B II-2.3).

Sanction

I cannot determine the sanction in the event of failure to appoint a representative: I am not certain whether this failure constitutes a « formal » irregularity under Article R612-46 of the IPC.

The most likely outcome is that this irregularity results in the acts performed by the applicant not being considered valid by the INPI: a response to a notification will therefore be deemed not received. The sanction will rather arise from this non-response.

Formal rules for the text and drawings

Requirements

Drawings

The Order of September 19, 1979 on the filing formalities for patent applications (Articles 12 to 14) sets out the various requirements that drawings must meet, including:

• drawings must be made in black and white, using lines, without color or shading;
• inscriptions on the drawings (references, text, etc.) must be simple (not circled, without parentheses or quotation marks). They must use the Latin or Greek alphabet;
• the font size must not be less than 3.2 mm (the size depends on the chosen font, so be careful);
• the margins cannot be smaller than the following diagram:

Other documents

Furthermore, the Order of September 19, 1979 on the filing formalities for patent applications (Articles 3, 7 to 11) sets out the various requirements that the other documents of the application (e.g., request, description, and claims) must meet, including:

• sheets must be in A4 format and used in portrait orientation;
• the text must be typewritten or printed. Only symbols and graphic characters, chemical or mathematical formulas may be handwritten or drawn if necessary;
• for typewritten texts, the line spacing must be 1.5;
• all texts must be in a font where uppercase letters are at least 2.1 mm high (the size depends on the chosen font, so be careful) and in black;
• the lines of the description and claims must be numbered in increments of 5, on the left side of the sheet (but not within the margin);
• the description must not contain references to the claims;
• sheets must be numbered with an Arabic numeral centered at the top of the sheet (but not within the margin);
• the margins cannot be smaller than the following diagram:

DOCX cases

It is interesting to note that Article 7 of Decision 2018-156 of the Director General of the INPI appears to consider that these formalities do not apply to patent applications filed in DOCX format.

For example, Article 9 of Decision 2018-156 of the Director General of the INPI provides for a minimum font size of 11 points, whereas the Order of September 19, 1979 on the filing formalities for patent applications specifies characters with uppercase letters at least 0.21 cm high (other than drawings) and 0.32 cm high for characters in drawings.

This is quite strange and incomprehensible…

Sanction

In case of irregularity, a time limit is set for the applicant to correct the filing (R612-46 CPI, paragraph 1).

If the irregularity is not corrected within the set time limit, the patent application is refused (R612-46 CPI, paragraph 3); however, the applicant is deemed to have accepted the correction proposed by the INPI (if any) if no response is provided (R612-46 CPI, paragraph 2).

The applicant may then file a request for further processing within 2 months from the notification of the refusal decision (R612-52 CPI; a further processing official fee must be paid and the omitted act must be completed within this time limit).

Sequence listing of nucleotides and amino acids

Form

The description of the invention may be accompanied by a sequence listing of nucleotides or amino acids, which appears in an annex (R612-13 CPI, 2°).

The standard used is WIPO Standard ST.25 (INPI Examination Guidelines, I-B II.3.9).

It is entitled « Sequence Listing » and has separate pagination (from 1 to n) even if it forms part of the description (INPI Examination Guidelines, I-C I.3.15).

This listing must also be filed in computer-readable form on a data carrier such as a floppy disk or CD-ROM (INPI Examination Guidelines, I-B II.3.9).

A signed declaration must be provided to certify that the paper version of the listing is identical to the electronic version (INPI Examination Guidelines, I-B II.3.9).

Examination at filing

If the prescribed sequence listing has not been filed or has been filed incorrectly, a time limit is set for the applicant to correct the filing (R612-46 CPI, paragraph 1).

If the irregularity is not corrected within the set time limit, the patent application is refused (R612-46 CPI, paragraph 3).

The applicant may then file a request for further processing within 2 months from the notification of the refusal decision (R612-52 CPI; a further processing official fee must be paid and the omitted act must be completed within this time limit).

Summary of requirements