Replacement of a French patent by a European patent

The French patent ceases to have effect

Principle

Article L614-13 CPI establishes the principle of replacing a European patent with a French patent covering the same invention:

To the extent that a French patent covers an invention for which a European patent has been granted to the same inventor or his successor in title with the same filing or priority date, the French patent shall cease to have effect either on the date on which the period for filing an opposition to the European patent expires without an opposition having been filed, or on the date on which the opposition proceedings are closed, the European patent having been maintained.
[… ]
The subsequent lapse or revocation of the European patent shall not affect the provisions of this article.

Conditions

Thus, there are five conditions for such a replacement to take place:

• A French patent has been granted;
• A European patent has been granted;
• The European patent covers the same invention as the French patent;
• The inventor or his successor in title is the same;
• Both patents share the same filing date (even if no priority claim is made).

Effective date

If the above conditions are met, the French patent ceases to have effect:

• If no opposition is filed:
  • 9 months (A99(1) EPC) after the publication of the mention of grant in the EPO Bulletin (A97(3) EPC).
• If an opposition is filed:
  • At the end of the appeal period following opposition (i.e., 2 months (A108 EPC) from the written notification of the decision (R111(1) EPC)) if no appeal is filed;
  • On the date of the appeal decision (A111(1) EPC) if an appeal is filed.

Issue of the designation of France

One might wonder whether the withdrawal of France as a designation in a European patent application affects this replacement.

I would tend to say no: indeed, Article L614-13 CPI is completely silent on whether France is designated or not.

It is rather absurd, but that is how it is…

Issue of the scope of the claims

EP claims = FR claims

In this case, there is no difficulty…

The French patent simply disappears!

EP claims > FR claims

If the European claims are broader, the courts also consider that the French patent ceases to have effect (Paris Court of Appeal, 4 November 2014).

Although, stricto sensu, the two patents do not cover exactly the same invention, the courts’ approach is understandable since the European patent covers subject matter also covered by the French patent.

EP claims & FR claims

If the European claims are narrower, the Cour de Cassation held that the French patent also ceased to have effect (C. Cass. com., 7 January 2014, No. 12-28883).

In reality, this is highly debatable (and I am not even sure that the judges realized the scope had been restricted in the case at hand).

Indeed, legal scholars tend to favor the continued validity of the French patent, but only to the extent that the subject matter is not covered by the European patent (i.e., a sort of Swiss cheese, so to speak).

In another case, the judges clearly saw that the European patent had been limited (i.e., combination of claims 1+2+4) but they ruled that substitution had indeed occurred (Paris Court of Appeal, Pole 5, 1st ch., 30 June 2015): once again, this is debatable, but even more so here. Indeed, in this case, the French « patent » FR 09 50127 had not even been granted: the patent application was rejected before grant (i.e., contrary to the wording of L614-13 CPI, which requires the existence of a French patent and not merely an application).

Issue of the lapse of the European patent

Statement of the issue

A proprietor may abandon their European patent by failing to pay a French annuity shortly after grant (the proprietor may seek to maintain their patent in other countries).

Due to the automatic validation in France of European patents, the question arises as to when the European patent ceases to have effect in France, in order to verify that, at the date of any potential substitution, the European patent no longer exists (and thus avoid this automatic substitution).

Several dates could be considered for this disappearance of the European patent following the non-payment of an annuity:

• the normal due date for the annuity;
• the due date for the grace period of the annuity;
• the date of the decision of the Director of the INPI declaring the lapse of the French part of the European patent.

The solution of the Cour de Cassation

The judges of the highest court ruled: a patent ceases to have effect following the non-payment of an annuity as of the date of the decision of the Director of the INPI declaring the lapse (C. Cass. com., 18 October 2011, No. 10-24326).

This decision is therefore not a mere recognition of a previously established fact but indeed produces a legal effect.