Divisional Applications

A divisional application (child application) is a patent application that originates from an earlier patent application (parent application).

The effects of division

Benefit of the earlier filing date

The division of a French patent application allows the filing of a patent application while benefiting from the filing date of another French application, i.e., the « parent » application (L612-4 CPI, paragraph 2).

File constitution

Upon division, the file of the divisional application is constituted by the file of the earlier application (R612-35 CPI, paragraph 3).

However, if the divisional application is restricted, only the « restricted » description will be accessible in this file (R612-35 CPI, paragraph 3).

The utility of divisional applications

Division is primarily useful where one of your applications contains several inventions and the Examiner has raised a « lack of unity of invention » (L612-4 CPI, paragraph 2): some inventions had to be abandoned for the examination to proceed, but you still wish to protect these inventions.

Filing a divisional application is the ideal solution in this situation.

Conditions for dividing a patent application

Substantive conditions

Description and drawings

When dividing an application, the applicant has two options (R612-35 CPI, paragraph 2):

• reproduce the description and drawings identically (the claims may then be amended to restrict the subject matter); limit the description and drawings to the part of the invention covered by the new claims;

Thus, it is not possible to add any content to the application.

Claims

The claims must always be supported by the description (L612-6 CPI, second sentence).

Formal conditions

Types of parent application

Any French application may be divided.

A utility certificate application cannot be divided into a patent application (INPI Examination Guidelines, I-B III.2): only division into a utility certificate is possible.

As shown in the above diagram, it is entirely possible (INPI Examination Guidelines, I-B III):

• to divide the same application multiple times; or to perform chain divisions;

Pending parent application

Under L612-4 CPI, R612-34 CPI and R612-35 CPI, only a patent application (i.e., pending) may be divided.

Thus, it appears possible to divide:

• if a time limit has not been met:
  • until the expiration of the time limit in question, since the restoration request has no suspensive effect (INPI Examination Guidelines, I-E 3.3.1 d)),
  • unless restoration is successful;
• if an application is rejected or deemed inadmissible:
  • until the expiration of the appeal period (500 CPC, 1 month under R411-20 CPI) if no appeal is filed;
  • until the end of the appeal if an appeal before a Court of Appeal is filed (L411-4 CPI, paragraph 2) due to its suspensive effect (general principle of Article 539 CPC, confirmed by INPI Examination Guidelines, I-E 3.3.1 d)); if an annual fee deadline for an application is not paid, two schools of thought exist (and frankly, I do not know which to choose): either division is possible only until the normal due date for payment of the annual official fee (L613-22 CPI, second paragraph, « The lapse takes effect on the due date of the unpaid annual fee »); or division is possible as long as the INPI Director has not issued a notification of lapse (since even if the lapse is retroactive, the Director’s decision cannot affect an irrevocably acquired situation at the time of division, by analogy with C. Cass, ch com., No. 10-24326);
• if the application is withdrawn:
  • before the INPI receives all the documents necessary for withdrawal (declaration, powers of attorney, etc.), since this is the date on which the withdrawal becomes effective and irrevocable (INPI Examination Guidelines, I-F);
  • a priori, division on the same day appears impossible (but I have no case law);
• if the INPI decides to grant a patent, division is possible until payment of the official fee for grant and printing of the patent specification (R612-35 CPI).

Parent application to be considered

Voluntary division

In the case of a cascading division (i.e., A is divided into B, and B is divided into C), to verify whether the parent application of C is pending (see previous conditions), the application A must be considered (INPI Examination Guidelines, I-B III.2).

This interpretation by the INPI is highly surprising, as it is exactly the opposite of the European position (I would be interested to know the legal basis allowing the INPI to adopt this position)…

This position even contradicts the fact that cascading patent applications can be divided: this possibility would be meaningless if the truly important application for assessing the previous conditions were the « initial parent application, » would it not?

It should be noted that the judges (Paris Court of Appeal, Division 5, Chamber 2, November 22, 2019, Case No. 18/27433) have validated this interpretation by the INPI. Indeed, according to the judges, the term « patent » in Article R612-34 CPI refers to the term « initial patent application » in the same sentence. Furthermore, according to them, the term « initial application » is the « root » application (since Article L612-4 CPI provides that divisional applications benefit from the filing date of the parent application).

I must admit that I remain skeptical…

Indeed:

• Syntactically in French, nothing indicates that the term « patent » refers to the term « initial patent application. » It is entirely possible that the term « patent » means the patent that will be obtained (i.e., the one from the divisional application in the case of cascading divisions).
  • « Until payment of the official fee for grant and printing of the patent specification » – this part of the sentence only indicates a time condition. « The applicant may, on their own initiative, file divisional applications of their initial patent application » – this part of the sentence only indicates the subject to be divided.
• If the reasoning of the Court of Appeal were correct, this would mean that cascading divisions would not be possible since it would only be possible to divide the initial application under R612-34 CPI (yet, the INPI Guidelines explicitly provide for this case… INPI Examination Guidelines, I-B III.2).

Forced division

It should be noted that Article R612-34 CPI only applies to divisions initiated by the applicant.

Therefore, in the event of a lack of unity of invention, this article would not appear to be applicable (and thus, the reasoning of the Court of Appeal in the Kubota decision (Paris Court of Appeal, Division 5, Chamber 2, November 22, 2019, Case No. 18/27433) would not apply).

Referring to Article L612-4 CPI, we see that an application that does not satisfy the unity of invention requirement must be divided.

Therefore, I do not see how the INPI could refuse a « forced » divisional application, even if this divisional application is of the second generation and the « initial » application is no longer pending.

If my interpretation is correct, this would mean there is a discrepancy between « forced » divisional applications and divisional applications « initiated by the proprietor »… which is rarely a good idea…

Furthermore, this could encourage applicants to create a unity of invention issue when filing their first-generation divisional application (or even after receiving the search report) in order to reserve the right to divide subsequently.

Standard conditions

In any event, the filing of a divisional application remains the filing of an application: thus, the standard formal requirements (description, request for grant, etc.) must be complied with (Article R612-35 CPI, paragraph 1).

Specific indications for divisional applications

The request for grant must specify (INPI Examination Guidelines, I-B III.1):

• in the section on the nature of the application: i.e. « divisional application » (R612-10 CPI 1°/ and INPI Examination Guidelines, I-B II.3); the number of the parent application.

Otherwise, the application is processed as a « normal » application (and the parent application may be cited as prior art under L611-11 CPI paragraph 3) (INPI Examination Guidelines, I-B III.1).

Applicants

The applicants for the divisional application must be exactly the same as those of the parent application (R612-34 CPI and INPI Examination Guidelines, I-B III.4), unless an assignment has been validly recorded in the National Register of Patents (RNB).

If the applicant does not match the information in the RNB, the applicant of the division is notified and may justify this by providing evidence of an assignment not yet recorded in the RNB (INPI Examination Guidelines, I-B III.4).

Inventors

As with any patent application, it is possible to designate the inventors within a period of 16 months from the effective filing date (here, that of the parent application, R612-11 CPI, paragraph 2 in conjunction with R612-10 CPI, paragraph 1, 3°).

However, for divisional applications, it is always possible to designate the inventors within a period of 2 months from the invitation under R612-11 CPI (R612-35 CPI, paragraph 4).

Official fees to be paid

Filing and search official fees

Time limit

The filing and search official fees must be paid within a period of 1 month from the division (R612-35 CPI, paragraph 1 in conjunction with R612-5 CPI).

Otherwise, the application is refused (R612-45 CPI, paragraph 1, 2°).

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

Filing official fee

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):

• 36 € for a paper filing;
• 26 € for an electronic filing.

Search official fee

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):

• 520 € for a standard search;
• 156 € 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 when 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 when 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 when paying the search official fee.

Claim official fees

Principle

If the number of claims provided exceeds 10, a claim fee is due for each claim starting from the 11th (R411-17 CPI).

This official fee is 40 € for each claim starting from the 11th (Order of April 24, 2008 on official fees for procedures collected by the INPI, Annex).

Deadlines

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

Otherwise, the application is rejected (R612-46 CPI, paragraph 3).

Annual fees

When filing a French divisional application, it is necessary to pay the annual official fees (R613-46 CPI).

Regarding due dates that have already passed, Article R613-47 CPI provides that the annual official fee is considered validly paid if payment is made « no later than the last day of the fourth month following the date of receipt of the divisional application documents. »

The question then is: « Do the already due official fees benefit from the 6-month grace period under Article L612-19 CPI, paragraph 2? »

According to the INPI guidelines (INPI Examination Guidelines, II-A 2), the answer is unequivocal: the 6-month period should be applied from the end of the preceding 4-month period.

I personally have reservations: in my view, nothing in the statute supports this assertion.

If the 4-month period is a period during which payment « is considered validly made » (legal fiction under Article R613-47 CPI), the due date of the annual official fee (i.e., the date on which payment is due) does not appear to be modified.

Thus, in my personal interpretation, the 6-month grace period begins on the « normal » due date of the annuity.

I leave it to you to decide which of the two interpretations is correct.

Official Fee Reductions

An official fee reduction 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 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 education or research sector:

• it is necessary to provide, within 1 month from the filing of the patent application, a written request for reduction and a copy of the bylaws (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 fee;
• the search fee
  • unless the application is a foreign priority application accompanied by a search report recognized as « equivalent » by the INPI Director General;
• the annuities for years 1 to 5.

The reduction is 25% for (R613-63 CPI together with Order of April 24, 2008 on official fees for procedures collected by the INPI, Art 2):

• the annuities for years 6 and 7.

Claim fees do not benefit from any reduction.

Some Procedural Aspects

Priority

It is possible to claim a priority if it has been claimed in the parent application (INPI Examination Guidelines, I-B III.5).

However, it is not possible to add a priority unless it is added (R612-24 CPI, paragraphs 2 and 3):

• either within 4 months of the filing of the parent application;
• or within 16 months of the earliest priority (existing or added).