To determine whether your invention is patentable, the INPI will conduct a prior art search: the preliminary search report.
Content Enabling a Search
Principle
If a patent application has been accorded a filing date, a search report is established for that application (L612-14 CPI and R612-57 CPI, paragraph 1): this report identifies elements of the prior art that may be considered in assessing the patentability of the invention (INPI Examination Guidelines, I-C VIII.2).
Description or Claims Not Enabling the Search
In some cases, the description does not allow the establishment of a search report: the application must then be rejected (L.612-12 CPI, 6°).
Indeed, the description and the claims must enable an understanding of the technical problem addressed and how the invention proposes to solve it (INPI Examination Guidelines, I-C II.1.1, for the description and INPI Examination Guidelines, I-C IV.1.3, for the claims): they must therefore be clear, unambiguous, and solve the technical problem (e.g., exclusion of fanciful theories such as perpetual motion).
Search Basis
Positive Basis
The search is conducted based on the filed claims (R612-57 CPI, paragraph 1), taking into account the description and, where applicable, the drawings.
Independent claims, as well as dependent claims, are searched (INPI Examination Guidelines, I-C VIII.3).
Negative Basis
If a « commonplace » feature is present in a claim, it is quite likely that no search will be conducted on that feature, and no document disclosing that feature will be cited: this does not mean that the feature is inventive (INPI Examination Guidelines, I-C VIII.3).
Type of Search
Standard Search
A « standard » search is conducted based on the claims as filed.
Partial Search
In some cases, the search may only cover certain elements (INPI Examination Guidelines, I-C VIII.3.3). This is particularly the case if the claims are:
- too broad or speculative: the search is then conducted on a narrower basis,
- too numerous,
- defined by obscure or unknown parameters,
- defined in terms of the result to be achieved.
The search report will mention this fact (INPI Examination Guidelines, I-C VIII.3.3).
Supplementary Search
If the subject matter of new claims is not covered by the claims as filed (INPI Examination Guidelines, I-C VIII.6.1.a), a notification is sent to the applicant to pay the official fee for the establishment of a search report within a set time limit (R612-61 CPI).
This is notably the case if the new claims (INPI Examination Guidelines, I-C VIII.6.1.a):
- constitute a generalization of the previous claims;
- modify the inventive concept (e.g., a variant not previously claimed);
- include claims of a category (process, product) not previously claimed.
Failing this, the new claims are disregarded (i.e., declared inadmissible), and the procedure continues with the claims on the basis of which the search was carried out (R612-61 CPI).
The supplementary search procedure is identical to that of the normal search (INPI Examination Guidelines, I-C VIII.6.2).
Communication of Foreign Search Reports
Principle
If a patent application for the same invention (whether or not a priority has been claimed) has been filed abroad, the INPI may request the communication of foreign search reports (INPI Examination Guidelines, I-C VIII.4.1 and R612-56-1 CPI).
Type of Information Requested
The applicant must communicate all information available to them, as of the date of the notification, regarding the prior art that was taken into consideration in the foreign procedures (INPI Examination Guidelines, I-C VIII.4.1 and R612-56-1 CPI).
Patent documents do not appear to be required, but non-patent documents may be (R612-56-1 CPI, paragraph 2).
A translation of the relevant passages of the cited documents may be required (INPI Examination Guidelines, I-C VIII.4.1 and R612-56-1 CPI, paragraph 2).
Time Limit and Sanction
The applicant has a set time limit (R612-56-1 CPI, paragraph 3) of 2 months (INPI Examination Guidelines, I-C VIII.4.1), renewable once, from the date of receipt of this invitation to communicate to the INPI all such information.
Failing this, the application is refused (R612-56-1 CPI, paragraph 3 in conjunction with L612-12 CPI 9° in conjunction with R612-51 CPI) after a notice of impending refusal has been sent to the applicant and a new set time limit has been granted.
Amendment of the Application
The applicant may no longer amend their application once they have provided information on the prior art considered for a previous foreign application (or indicated their inability to provide it) or if the establishment of the search report has begun (L612-13 CPI paragraph 1 and INPI Examination Guidelines, I-C VIII.4.2).
The applicant may therefore no longer amend the claims on their own initiative until the French preliminary search report has been notified to them (L612-13 CPI paragraph 1 and INPI Examination Guidelines, I-C VIII.4.2).
Content of the Search Report
Search Report
The various documents are classified according to their relevance (INPI Examination Guidelines, I-C VIII.3.1):
- The common classifications:
- X means that the document is particularly relevant on its own (i.e., it would destroy the novelty of the application);
- Y means that the document is relevant if combined with another document of the same type (i.e., it would destroy the inventive step of the application);
- A means that the document is merely cited, as it is in a related field but does not anticipate the application;
- The slightly rarer classifications:
- T means that the document presents the scientific theory underlying the application (but without anticipating it);
- D means that the document is cited in the application itself. This classification may be combined with another classification (e.g., « DX »);
- P means that the document is an intermediate document: it would be relevant if the priority were not valid. This classification may be combined with another classification (e.g., « PY »);
- E means that the document has an earlier filing date than the application under examination but was published afterward (it may therefore be L611-11 CPI, paragraph 3, if it is a FR, EP/FR, or PCT/FR application);
- The rare classifications:
- O means that the disclosure is not a written disclosure;
- L means that the document is cited for another reason (often, this classification serves as a « catch-all » classification).
In addition, each cited document is linked to the claims against which it is relevant (R612-57 CPI, paragraph 3).
Written Opinion
Since March 3, 2007, the search report has been accompanied by an opinion on patentability (R612-57 CPI, paragraph 1).
This opinion is intended to help the applicant interpret the preliminary search report with regard to novelty and inventive step (INPI Examination Guidelines, I-C VIII.3.4).
Transmission of the Preliminary Search Report
Principle
Once established, the preliminary search report is transmitted to the applicant (R612-58 CPI).
The applicant then has a period of 3 months (renewable upon request once) to file new claims or submit observations (R612-59 CPI).
Mandatory Response?
A response is mandatory if the search report cites prior art, particularly documents coded X, Y, or E that are opposable (R612-58 CPI and INPI Examination Guidelines, I-C VIII.5.2.1).
Failure to respond within the time limits results in the refusal of the application (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 new time limit has been granted.
Publication of the Preliminary Search Report
The preliminary search report is published together with the patent application (R612-62 CPI).
If this preliminary search report is not yet established by the date of publication, it is published separately as soon as it is notified to the applicant (R612-62 CPI).
The publication date is recorded in the BOPI (R612-62 CPI).
Establishment of the Final Search Report
Once the response deadlines to the preliminary search report have expired, a « final » search report is established (R612-65 CPI and INPI Examination Guidelines, I-C VIII.7).
Search Official Fee
Amount
The amount of the search official fee is set at (Order of April 24, 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 filing is a filing under foreign priority accompanied by a search report recognized as « equivalent » by the INPI Director General, i.e.:
- under priority of a Swiss filing (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 filing (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 filing (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.
The reduced official fee of [montant_epo default= »156 € » name= »INPI – Search report if equivalent report »] is granted if, in addition, the applicant:
- provides the foreign search report when paying the official fee;
- provides the documents cited in this report;
- provides a certificate stating that the claims/description are identical (or the only differences are purely formal).
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 education or research sector:
- 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 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 search official fee unless the filing is a filing under foreign priority accompanied by a search report recognized as « equivalent » by the INPI Director General.