When the applicant has not complied with a deadline in respect of the Institute, he may appeal to the Director General of the INPI to restore his rights (L612-16 CPI).
Times that can be "restored"
Any delay may, in principle, be restored if the non-observance of this deadline has the direct consequence (L612-16 CPI):
- the rejection of the patent application or an application,
- the forfeiture of the patent application or the patent or
- the loss of any other right.
As an exception to this principle, can not be restored (L612-16 CPIlast paragraph):
- the priority period (L612-16 CPI);
- the specific restoration time of the priority period (L612-16 CPI together L612-16-1 CPI) (because there are specific provisions, see below);
- the deadlines for submission and correction of a declaration of priority (L612-16 CPI), that is to say :
- at the time of 16 months from the earliest priority date claimed (for an addition, R612-24 CPIparagraph 2).
- at the time of 16 months from the earliest date among (for correction, R612-24 CPIparagraph 3):
- the earliest priority date before correction and,
- the earliest priority date after correction ;
- in a delay of 4 months from the filing date (for correction, R612-24 CPIparagraph 3).
I suppose that the remedies period for restoration (L612-16 CPI) is also, but it is not indicated ...
Special case concerning the priority period
As noted above, the restoration remedy is not open for the priority period.
Nevertheless, a specific remedy is possible (L612-16-1 CPI).
As for the restoration remedy, it is necessary (L612-16-1 CPI) to have a legitimate excuse.
The big difference comes mainly from the delay of presentation of the appeal. It is necessary to present the appeal and to file the request under priority:
- in a delay of 2 months from the expiry of the priority period (L612-16-1 CPI)
- before the completion of the technical preparations for the publication of the patent application: therefore, care should be taken in the event of a request for advance publication (L612-16-1 CPI).
Special case of annuities
To be able to present a remedy in restoration, it is necessary (L612-16 CPI):
- to present the appeal:
- under 2 months from the end of the impediment;
- and under 1 year from the expiry of the unobserved period;
- to perform the act not accomplished within the same period.
Special case of non-French holders
Assessment of the cessation of the impediment
The termination of the impediment most often depends on factual circumstances which the applicant must prove (INPI Examination Guidelines, IE 3.3.1.b).
If the agent is defective (eg he did anything…), one can wonder on what date the impediment ceases: is it the date of receipt of the notification by the agent or its acquaintance by the holder.
In a decision of the Court of Paris, Pôle 5, 1st ch., April 25, 2017, RG n ° 16/11489, the court specifies that it is well the knowledge by the holder who makes leave the period of recourse.
Payment of a restoration tax
Restoration must be accompanied by a restoration fee (R613-52 CPI) of 156 € (Order of 24 April 2008 on procedural fees collected by the INPI).
Justification of a legitimate excuse
Moreover, it must be possible to justifya legitimate excuse (L612-16 CPI).
The lawful excuse (INPI Examination Guidelines, IE 3.3.1.a)
- perhaps :
- a sickness,
- the death of a loved one,
- the difficult situation of the society that the person directs;
- the difficult financial situation due to unemployment or illness;
- accidental and unforeseeable events having a cause and effect relationship with non-compliance with the deadline;
- the disorganization of the company, which is linked, in particular, to significant difficulties or to its settlement or liquidation;
- the fire of the premises of the company;
- the simultaneous departure of several employees;
- can not be :
- related to a foreseeable situation;
- related to financial difficulties except case mentioned above.
It should be noted that the INPI seems to accept that "accidental facts" actually cover any material error made by (INPI Examination Guidelines, IE 3.3.1.a):
- the holder if he manifests his wish to maintain his rights;
- the agent or a specialized IP service.
However, the error of a secretary is not likely to justify a legitimate excuse because the holder or the agent or the specialized service remains responsible for monitoring deadlines (INPI Examination Guidelines, IE 3.3.1.a).
Person who can bring the action
With regard to the wording of the article L612-16 CPI (that mentions " patent " or " patent application"), It appears that the appeal may be brought by the plaintiff or patent proprietor (R613-52 CPI).
If the application / patent is published, it is necessary that the person presenting the appeal be registered in the GNI (R613-52 CPI).
INPI decision on appeal
In response to the INPI
The solution is then simple: if the INPI gives an answer, this answer is the decision of the INPI (article 21 of the Law No. 2000-321 of 12 April 2000 on the Rights of Citizens in their Relations with Administrations).
This decision is subject to litigation.
In the absence of a response from the INPI
The law of November 12, 2013 posits the principle that the silence kept by the administration on a request is agreement (under certain conditions). These provisions apply from November 12, 2014 to requests addressed to the administrations of the State and its public institutions from that date.
Thus, if there is no answer under 18 months, the silence of the INPI means a acceptance implied recourse (Decree No. 2014-1281, Annex).
Point of attention on the annuities during the appeal
The restoration remedy is not suspensive. Therefore, it is appropriate to continue to pay his annuities during the appeal (INPI Examination Guidelines, IE 3.3.1.c).
If the restoration remedy relates to the non-payment of an annuity, the restoration will only have effect if the subsequent annuities due on the day of the restoration have been paid within three months of the registration. of the restoration decision to the National Patent Register (INPI Examination Guidelines, IE 3.3.1.c and R613-50 CPI).