Examination of the application and grant of a patent

Once the preliminary search report has been issued, a response must be filed 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).

Is a Response Mandatory?

A 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

If no response is filed within the time limit, the application will be refused (R612-58 CPI together with L612-12 CPI 9° together with R612-51 CPI) after a notice of impending refusal has been sent to the applicant and a further 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 objection raised by the Examiner (R612-37 CPI).

The applicant may potentially submit multiple 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:

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 the 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 must be carried out 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 previously unclaimed variant);
  • 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 applicant’s amendments and observations 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

Notice to remedy and time limit

The INPI sends a notice to remedy to the applicant in order to grant a new time limit of 2 months to correct the application:

  • if the application still contains a formal irregularity (e.g., margin, font size, etc.) or if a formal irregularity was introduced when responding to the examination report (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 allow a search to be carried out (e.g., new claims unclear) (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 examination report 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 examination report (i.e., submission of amendments or observations) (R612-51 CPI together with L612-12 CPI 9°).

Failure to respond to this notice to remedy

In the absence of a response to this notice to remedy, the application is refused, as the case may be, under:

A request for further processing may then be filed by paying the prescribed official fee (R612-52 CPI).

Satisfactory response to the notice to remedy

Nothing to report: all is well for you… the grant of a patent is approaching!

Unsatisfactory response to the notice to remedy

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 2-month period 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 unclear) (see L612-12 CPI 6°);
  • if the claims are not supported by the description (see L612-12 CPI 5°).

Oddly, for these last four cases, the INPI guidelines state that a notification of a rejection decision is sent prior to rejection (INPI Examination Guidelines, I-E 2.2.2.C). That said, 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:

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 to bring 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 patent (R612-70 CPI).

Once payment has been made, the applicant is informed of the grant of their patent, with an indication of the date and the number of the Official Industrial Property Bulletin 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 patent, is 90 € (Order of 24 April 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 a 4-month period from the date of the grant decision (Conseil d’État, Ternon judgment, 26 October 2001 No. 197018 and INPI Examination Guidelines, I-B VI.2).