Principle

Once the application is filed, the scope of the invention is fixed.

If the proprietor later seeks to amend their claims to cover a « new invention » they had not considered at the time of filing (e.g., a product similar to a competitor’s invention), it is reasonable to deny such an amendment.

During the examination of the application, Article L612-12 CPI 8° applies (« Any patent application shall be rejected in whole or in part… if the claims are not based on the description« ).

However, after grant, it is interesting (well… depending on one’s sense of humor!) to note that the wording of the prohibition is no longer the same (following the European formulation, L613-25 CPI c) « The patent shall be declared invalid by a court decision… if its subject-matter extends beyond the content of the application as filed« ).

Before grant: basis of the claims on the description

If the claims are not based on the description, this may mean:

  • that at the time of filing, the applicant forgot their « support« ;
  • that during the examination, the applicant sought to amend their claims in an unsupported manner.

While the second case almost certainly leads to the rejection of the application (R612-37-1 CPI), in the first case (i.e., forgetting the support), the INPI will invite you to correct the description via a correction of a clerical error (R612-36 CPI): an official fee will be payable.

After grant: content of the application as filed

The description

The content of the description is, of course, part of the application as filed (e.g., Regional Court of Paris, 3rd Chamber, 3rd Section, 27 June 2000 or Court of Appeal of Paris, Division 5, 2nd Chamber, 20 December 2013, Case No. 2012/14147).

The claims as filed

The claims are also part of the application as filed (Court of Appeal of Paris, Division 5, 2nd Chamber, 20 December 2013, Case No. 2012/14147).

Indeed, the fact that a claim is not supported by the description is not an issue after grant (Regional Court of Paris, 3rd Chamber, 3rd Section, 30 April 2002): by the term « application, » it must be understood as « description and claims » (Regional Court of Paris, 3rd Chamber, 3rd Section, 27 June 2000), at a minimum.

Designs?

Generally, the French judge is reluctant to use designs for the application of this article:

Indeed, designs cannot « compensate for the absence of the description » (C. Cass. com., 3 December 1969).

I do not share this opinion, as the terminology of Article L613-25 CPI c) is clear: it refers to the « application » and designs are part of it, in my analysis.

It should be noted that some decisions explicitly mention designs as usable (Tribunal de Grande Instance de Paris, 3e ch., 3e sect., 9 January 2008).

Nevertheless (and somewhat like in European case law), it seems possible to use dimensions determined from the figures (e.g.: « the size of a connecting rod is x cm », C. Cass. com. 26 May 1964) if:

  • it is indicated in the application that this dimension is important;
  • the figures are not schematic and include, for example, dimensions.

Analysis of the extension

Principle

There is an extension of the application if the amendment does not derive directly and unambiguously from the information contained in the application as filed, taking into account the common general knowledge of the person skilled in the art (Cour d’Appel de Paris, Pôle 5, 2e ch. 20 December 2013, RG n°2012/14147).

This approach is common with that of the EPO.

In particular, this test is not an obviousness test (Tribunal de Grande Instance de Paris, 3e ch., 3e sect., 9 January 2008): thus, the proprietor of the patent cannot add elements that would have been merely « obvious » to the person skilled in the art upon reading the application.

It is not necessary to use a word-for-word repetition of the description (e.g. « safety valve » replaced by « automatic valve« , Cour d’appel de Paris, 4e ch., 4e section, 27 March 2002) as long as the amendment has the same technical meaning as the initial disclosure.

Addition of a feature

An extension of the application as filed is not assessed with respect to whether the feature added to the claims is restrictive or not, but with respect to the subject matter disclosed in the initial application (Tribunal de Grande Instance de Paris, 7 May 2014).

Thus, the addition of a feature (i.e., a limitation of the subject matter of the claims) may nevertheless constitute an extension of the content (Cour d’Appel de Paris, Pôle 5, 2e ch. 20 December 2013, RG n°2012/14147).

Deletion of a feature

The deletion of a feature from an independent claim may constitute an extension (Cour d’appel de Paris, 4e ch., sect. A, 31 January 2007, RG n°2005/22227)

  • if this feature is presented as essential to the invention and
  • if it is indispensable for its implementation, in view of the technical problem it aims to solve.

If a subject matter is claimed in a less precise manner than described, this constitutes an extension of the scope (Tribunal de Grande Instance de Paris, 3rd chamber, 2nd section, 3 October 2014, RG n°10/10179).

Intermediate generalization

Incorporating only part of the features of a dependent claim into the associated independent claim may constitute an extension of the content as filed (Cour d’appel de Paris, Pôle 5, 2e ch., 16 May 2014), particularly if the person skilled in the art could not have seen that there was a decoupling between the features of the dependent claim.

The content of the application must not be regarded as a reservoir from which it would be possible to combine features in order to artificially create a particular combination (Tribunal de Grande Instance de Paris, 3e ch., 3e sect., 9 January 2008).