Restoration Appeal

Definition

A restoration appeal (L612-16 IPC and R613-52 IPC) 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 INPI’s Director General to be restored in their rights (L612-16 IPC).

Deadlines That Can Be « Restored »

Principle

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

• 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 IPC, last paragraph):

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

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

Special Case Concerning the Priority Deadline

As mentioned earlier, a restoration appeal is not available for the priority deadline.

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

As with the restoration appeal, it is necessary (L612-16-1 IPC) 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 deadline from the expiration of the priority deadline (L612-16-1 IPC);
• before completion of the technical preparations for publication of the patent application: thus, care must be taken in cases of early publication requests (L612-16-1 IPC).

Special Case Concerning Annuities

Regarding annuities, the missed deadline is not the « normal » due date for payment of annuities, but the 6-month grace period provided under L612-19 IPC (R613-52 IPC).

Formal Requirements

Time Limits

Principle

To file a request for re-establishment of rights, it is necessary (L612-16 CPI):

• to file the request:
  • within 2 months from the date the impediment ceased;
  • and within 1 year from the expiration of the unobserved time limit;
• to perform the uncompleted act within the same time limit.

Special Case of 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 applicant must prove (INPI Examination Guidelines, I-E 3.3.1.b).

If the representative is at fault (e.g., they acted improperly), it may be questioned when the impediment ceases: is it the date of receipt of the notification by the representative or the date the proprietor becomes aware of it?

In a decision by the Paris Court, Pole 5, 1st Chamber, 25 April 2017, Case No. 16/11489, the court specified that the time limit for filing the request starts from the date the proprietor becomes aware of the impediment.

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

Payment of a Re-establishment Official Fee

The request for re-establishment of rights must be accompanied by a re-establishment official fee (R613-52 CPI) of [montant_epo default= »156 € » name= »INPI – Recours en restauration »] (Order of 24 April 2008 on official fees for procedures collected by the INPI).

Justification of a Legitimate Excuse

Furthermore, it is necessary to justify a legitimate excuse (L612-16 CPI).

The legitimate excuse (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 difficulties due to unemployment or illness,
  • accidental and unforeseeable events having a causal link with the failure to meet the time limit,
  • 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 situation that was foreseeable,
  • financial difficulties outside the cases mentioned above.

It should be noted that the INPI appears to accept that « accidental events » in fact cover any material 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 an IP specialized service.

However, an error by a secretary does not constitute a legitimate excuse, as the proprietor, representative, or specialized IP service remains responsible for monitoring time limits (INPI Examination Guidelines, I-E 3.3.1.a).

Person who may file the appeal

In light of the wording of Article L612-16 of the IPC (which refers to « patent » or « patent application« ), it appears that the appeal may be filed by the applicant or the proprietor of the patent (Article R613-52 of the IPC).

If the application/patent has been published, the person filing the appeal must be recorded in the NBR (Article R613-52 of the IPC).

INPI’s decision regarding the appeal

If the INPI responds

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

This decision is subject to judicial review.

If the INPI does not 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 note on 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 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 Article R613-50 of the IPC).