French application or French patent
Any French application or French patent gives rise to the payment of an annual fee to the INPI (L612-19 CPIparagraph 1) in the first year. In fact, it is considered that the first fee is paid in the filing fee (R613-46 CPI).
Annuities must be paid at the beginning of the year in question, on the last day of the anniversary month of the deposit (R613-46 CPI).
Extension of payment period
One wonders what happens if the last day of the anniversary month is a Sunday or a holiday.
This question is legitimate because the payment of annual fees is not subject to a deadline (or the article R618-3 CPI is only applicable to deadlines): they must simply be paid before a certain deadline fixed by the texts.
It is possible to pay this tax in advance, however this payment can not be validly made more than 1 year in advance (R613-46 CPI).
Late payment with surcharge
If the payment is not made on time, it remains possible to make the payment within a 6 months, subject to the payment of a surcharge (L612-19 CPIparagraph 2).
Normally, the INPI informs the holder by simple mail that he has not paid his annuity, but the holder can not claim a failure to notify (R613-48 CPI).
Starting point for the 6-month period
For normal requests
This period of 6 months starts from the day after the day of the expiry of the annual fee (R613-47 CPI), that is to say the first day of the following month.
If ever, the deadline had arrived a WE or a holiday (and therefore the deadline had been extended according to R618-3 CPI), it seems that the practice of the INPI does not make the 6 months from the extended deadline but only after the normal expiry date.
This practice of the INPI does not seem to me entirely consistent with the wording of the article L612-19 CPI , but OK …
For divisional applications
For divisional applications (R613-47 CPI), the INPI considers that the payment can be validly made until the last day of the fourth month following the date of receipt of the documents of the divisional application (INPI Examination Guidelines, II-A 2)
Still according to the INPI (INPI Examination Guidelines, II-A 2), if that payment has not been made in the 4 months above mentioned, it can be properly carried out (plus a late fee) within a grace period of 6 months from the expiry of the 4 months.
So we have the following schematic diagram:
Personally, I am very dubious about such an interpretation. I do not think the article R613-47 CPI said so many things.
If the period of 4 months is a period during which the payment "is considered validly performed" (legal fiction of the article R613-47 CPI), the due date of the annual fee (ie the date on which the payment is due) does not seem to me to be modified.
Thus, according to my very personal interpretation, the 6-month period begins on the "normal" due date of the annuity and the following diagram would be the correct schematic diagram:
Expiration of the period of 6 months
The deadline for 6 months expires on the day having the same date as the date of expiry of the annual fee (R618-3 CPI).
When we talk about the deadline, we are talking about the actual deadline, and not the deadline that may be extended by the INPI Examination Guidelines, II-A 2 (well… it seems to be the practice of the office…).
Unlike in Europe, nothing indicates that the deadline is at the end of the month (ultimo-ultimo): therefore, if the deadline was February 28, the grace period will expire a priori on August 28 ... Finally a priori …
Payment is made at the rate in effect on the day of payment (unless a warning indicating another rate has been sent to the applicant) (R613-47 CPI).
In case of restoration, the rate applicable is that in force on the date of restoration (R613-47 CPI).
A reduction in royalties is granted, until the 7th year, if the holder of the patent application or patent isL612-20 CPI):
- a physical person,
- a small or medium-sized enterprise (a company whose number of employees is less than 1000 and of which at most 25% of the capital is held by another entity that does not fulfill the same condition),
- a non-profit organization in the education or research sector.
The reduction is (Order of 24 April 2008 on procedural fees collected by the INPIArticle 2).
- 50% for royalties up to the 5th,
- 25% for royalties 6 and 7,
- 0% for royalties 8 to 20.
Insufficient payment, but corrected
The applicant / holder who has not paid the annuity at the end of the 6-month grace period is deprived of his rights (L613-22 CPI).
Is considered as failure to pay the annual fee (INPI Examination GuidelinesII-A 5):
- payment at an insufficient rate;
- the payment assigned to another calendar of annuity;
- the payment assigned to another patent application or other patent.
Forfeiture, established by a decision of the Director General of the INPI, takes effect on the due date of the unpaid annuity (L613-22 CPI).
However, this effect does not appear to be retroactive since the Court of Cassation indicated that the important date for determining whether a patent was forfeited was the date of the decision of the Director General of the INPI declaring the revocation (C. Cass. com., October 18, 2011, No. 10-24326) : Why make it simple when you can make it complicated…
No annual fee is due from the INPI as long as no European patent is issued (A86 (1) EPC).
I invite you to look at the article on payment of renewal fees in Europe for more details.
French part of a European patent
The INPI is competent from the mention of the grant of the patent (A141 (1) EPC) to collect the annual fees.
The previous provisions for French patent applications / patents therefore apply.
Transition period under the EPC
For greater flexibility, the EPC provides for a transition period just after the mention of the grant.
If annual fees are due in 2 months from the date on which the mention of the grant of the patent has been published in the European Patent Bulletin, these annual fees shall be deemed to have been validly paid if they have been paid to the INPI within that period. 2 months (A141 (2) EPC).
Of course, the EPC also provides for a grace period of 6 months to pay annuities (R51 (2) EPC).
The principle laid down by the EPC is therefore as follows:
Nevertheless, the writing of the article R614-16 CPI is somewhat different and raised some questions:
Where payment of an annual fee has not been made at the end of the period referred to in Article 141 (2) of the European Patent Convention, the said fee may be validly paid within six months, subject to payment of a late fee within the same period
Is it necessary to understand that the period of 6 months do not ride the deadline for 2 months (as indicated above), but adds ?