Definition

A restoration appeal (L612-16 CPI and R613-52 CPI) is quite similar to restitutio in integrum in Europe…

When an applicant fails to meet a deadline vis-à-vis the INPI, they may file an appeal with the Director General of the INPI to be restored in their rights (L612-16 CPI).

Deadlines That Can Be « Restored »

Principle

In principle, any deadline may be restored if failure to observe it directly results in (L612-16 CPI):

  • the rejection of the patent application or a request,
  • the lapse of the patent application or the patent, or
  • the loss of any other right.

Exceptions

By way of exception, the following deadlines cannot be restored (L612-16 CPI, last paragraph):

  • the priority period (L612-16 CPI);
  • the specific restoration period for the priority period (L612-16 CPI in conjunction with L612-16-1 CPI) (since specific provisions apply, see below); the deadlines for presenting and correcting a priority declaration (L612-16 CPI), i.e.:
    • the 16-month period from the earliest priority date claimed (for an addition, R612-24 CPI, paragraph 2); the 16-month period from the earliest date among (for a correction, R612-24 CPI, paragraph 3):
      • the earliest priority date before correction, and
      • the earliest priority date after correction;
    • within a 4-month period from the filing date (for a correction, R612-24 CPI, paragraph 3).

I assume that the deadline for the restoration appeal (L612-16 CPI) is also excluded, though this is not explicitly stated…

Special Case Concerning the Priority Period

As previously mentioned, the restoration appeal is not available for the priority period.

However, a specific appeal is possible (L612-16-1 CPI).

As with the restoration appeal, it is necessary (L612-16-1 CPI) to have a legitimate reason.

The main difference lies in the deadline for filing the appeal. The appeal must be filed and the application under priority must be filed:

  • within a 2-month period from the expiration of the priority period (L612-16-1 CPI), or
  • before the completion of the technical preparations for publication of the patent application: therefore, care must be taken in the case of a request for early publication (L612-16-1 CPI).

Special Case Concerning Renewal Fees

Regarding renewal fees, the missed deadline is not the « normal » due date for payment of renewal fees, but the 6-month grace period provided for in Article L612-19 CPI (R613-52 CPI).

Formal Requirements

Deadlines

Principle

To file a restoration request, it is necessary (L612-16 CPI):

  • to file the request:
    • within 2 months from the cessation of the impediment;
    • and within 1 year from the expiration of the missed deadline;
  • to perform the omitted act within the same period.

Special case for non-French proprietors

It should be noted that the additional « distance » time limit granted by Article 643 CPC does not apply (C. Cass. com., 14 May 2013, No. 12-15127).

Assessment of the cessation of the impediment

The cessation of the impediment most often depends on factual circumstances that the petitioner must prove (INPI Examination Guidelines, I-E 3.3.1.b).

If the representative is at fault (e.g., they acted improperly), one may question the date on which the impediment ceases: is it the date of receipt of the notification by the representative or the date of the proprietor’s awareness of it.

In a decision by the Court of Paris, Division 5, Chamber 1, 25 April 2017, Case No. 16/11489, the court specified that it is indeed the proprietor’s awareness that triggers the time limit for filing the request.

For example, if the client instructs their representative to pay an annuity and file an appeal, this will constitute the end of the impediment (Paris Court of Appeal, Division 5, Chamber 2, 24 September 2021, Case No. 19/22677).

Payment of a restoration official fee

The restoration request must be accompanied by a restoration official fee (R613-52 CPI) of 156 € (Order of 24 April 2008 on official fees for procedures collected by the INPI).

Justification of a legitimate reason

Furthermore, a legitimate reason must be demonstrated (L612-16 CPI).

The legitimate reason (INPI Examination Guidelines, I-E 3.3.1.a)

  • may include:
    • illness,
    • the death of a close relative,
    • unemployment,
    • the difficult situation of the company managed by the person,
    • financial hardship due to unemployment or illness,
    • accidental and unforeseeable events with a causal link to the failure to meet the deadline,
    • the disorganization of the company, particularly due to significant difficulties or its placement under judicial reorganization or liquidation,
    • the fire at the company’s premises,
    • the simultaneous departure of several employees,
  • may not include:
    • a foreseeable situation,
    • financial difficulties outside the cases mentioned above.

It should be noted that the INPI appears to accept that « accidental events » in fact cover any clerical error made by (INPI Examination Guidelines, I-E 3.3.1.a):

  • the proprietor if they demonstrate their intent to maintain their rights;
  • the representative or a specialized IP service.

However, a secretary’s error does not constitute a legitimate reason, as the proprietor, representative, or specialized service remains responsible for monitoring deadlines (INPI Examination Guidelines, I-E 3.3.1.a).

Person who may file the request

Based on the wording of Article L612-16 CPI (which refers to « patent » or « patent application« ), it appears that the request may be filed by the applicant or the patent proprietor (R613-52 CPI).

If the application/patent has been published, the person filing the request must be recorded in the National Register of Patents (R613-52 CPI).

INPI Decision Concerning the Appeal

If the INPI Responds

The solution is then straightforward: if the INPI provides a response, this response constitutes the INPI’s decision (Article 21 of the Law No. 2000-321 of April 12, 2000 on the rights of citizens in their relations with administrative authorities).

This decision is subject to judicial review.

If the INPI Fails to Respond

The Law of November 12, 2013 establishes the principle that the administration’s silence on a request constitutes acceptance (under certain conditions). These provisions apply from November 12, 2014, to requests submitted to state administrations and their public establishments from that date onward.

Thus, in the absence of a response within 18 months, the INPI’s silence signifies an implicit acceptance of the appeal (Decree No. 2014-1281, Annex).

Important Consideration Regarding Annuities During the Appeal

The restoration appeal is not suspensive. Therefore, it is necessary to continue paying annuities during the appeal (INPI Examination Guidelines, I-E 3.3.1.c).

If the restoration appeal concerns the non-payment of an annuity, the restoration will only take effect if the subsequent annuities due by the date of restoration have been paid within three months from the recording of the restoration decision in the National Register of Patents (INPI Examination Guidelines, I-E 3.3.1.c and R613-50 IPC).