Once filed, a patent application will be published. This publication gives rise to provisional protection against third parties.
Publication of the Application
Publication Date
Principle
When a patent application is filed, it is not immediately published.
However, after a period of 18 months (from the priority date or, failing that, the filing date of the application), the application will be automatically published (L612-21 CPI, 1°).
Publication consists of a mention in the BOPI (published every other Friday) and making the application available at the INPI (L612-21 CPI, 1°).
Notification to the Applicant
The applicant is notified of the publication date, the publication number, and the corresponding BOPI issue number (INPI Examination Guidelines, I-D).
Early Publication
At the Applicant’s Request
The patent application may be published before the 18-month period if the applicant specifically requests it (L612-21 CPI, 1° and R612-39 CPI).
The request must be submitted in writing (INPI Examination Guidelines, I-D).
The purpose is most often:
- to enter the application into the prior art as quickly as possible and for most countries worldwide;
- to benefit from early provisional protection.
Due to Early Grant?
Unlike the European procedure, there is no case of early publication due to grant.
Indeed, the publication of the preliminary search report initiates a 3-month period for third-party observations (R612-63 CPI).
The final search report cannot be established before the 18-month period (or the early publication request), and therefore, the grant cannot occur before this publication (L612-17 CPI together with L612-14 CPI).
Non-Publication
Cases of Non-Publication
The application is not published if, before the start of technical preparations for publication (R612-39 CPI paragraph 4 and INPI Examination Guidelines, I-D 3):
- it is withdrawn, or
- it is rejected.
However, this principle has an exception if:
- the application has been divided (R612-39 CPI paragraph 4);
- the application is one for which the benefit of the filing date has been claimed (i.e., internal priority, R612-39 CPI, paragraph 5) unless the applicant has waived this right.
Furthermore, the lapse of the application (i.e., non-payment of annual official fees, R612-72 CPI) does not prevent publication (INPI Examination Guidelines, I-D 3).
Withdrawal Declaration
The withdrawal must be explicit and is preferably made using a specific form (INPI Examination Guidelines, I-F).
This withdrawal can only apply to a single application.
Publication despite withdrawal
It may happen (e.g., INPI error, withdrawal after the start of technical preparations) that, despite the effective withdrawal of the filing, the filing is still published by the INPI.
In this latter situation, it is likely that this publication cannot be considered as a publication under Article L611-11 CPI, paragraph 3, since the publication occurs when the document is no longer a French filing.
Technical preparations for publication
The start of technical preparations for publication begins for the INPI approximately 6 weeks before publication (R612-40 CPI, « Decision of the INPI Director General on technical preparations for the publication of patent filings« , Decision 2011-714 published in the BOPI 12/06 and INPI Examination Guidelines, I-D).
Content of the publication
Principle: A1-type publication
For the INPI, the A1 publication is the publication of a patent filing (see the first pages of any BOPI, which provides the list of correspondences).
Name of the initial applicant?
If an assignment is made before publication, it should be noted that the publication will show the name of the initial applicant and not the name of the current holder of the patent filing.
Indeed, no entry is made in the National Register of Patents (RNB) before publication (R613-53 CPI).
Types of publication
The different nomenclatures are as follows (note that they differ somewhat in Europe):
- A1: patent filing;
- A2: filing for a certificate of addition to a patent (no longer exists, but still…);
- A3: utility certificate filing;
- A4: filing for a certificate of addition to a utility certificate (no longer exists, but still…).
Provisional protection
Start of protection
In theory, the exclusive right to exploit begins from the filing date of the application (L613-1 CPI).
However, this right is unenforceable against any third party before the publication of the patent filing (L615-4 CPI, paragraph 1) or its notification.
Thus, after publication of the patent filing, protection is granted to the applicant (subject to the scope of the claims not having been extended before grant, L615-4 CPI, paragraph 2).
Scope of protection
In the event that the patent filing is limited after publication (to obtain the final grant), the scope of the provisional protection will be retroactively modified (L613-2 CPI, since it is the granted claims that define the scope of the patent).
Of course:
- if, before grant, the patent filing is withdrawn or rejected, the provisional protection will be retroactively destroyed (L613-2 CPI, which is in fact a « complete » limitation);
- if the patent filing or the patent is revoked, limited, or declared invalid, the provisional protection will be retroactively destroyed (L613-27 CPI, Cour de Cassation, Assemblée plénière, February 17, 2012, No. 10-24282).
Case of European or Euro-PCT applications
If the application in question is a European application or a Euro-PCT application (which amounts to the same thing), provisional protection only takes effect from the date of publication of the translation of the claims (L614-9 CPI, second paragraph) by the INPI.
The translation is provided to the INPI by the applicant (R614-11 CPI). An official fee for publication of [montant_epo default= »36 € » name= »INPI – Publication of translation or revised translation of a European patent or of the claims of a European patent application »] is then required (Order of April 24, 2008 on official fees for procedures collected by the INPI, Annex).
If no translation is provided, provisional protection does not take effect.