Substitution of the French patent by the European patent

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Chapter 1. The French patent ceases to produce its effects

Section 1.1. Principle

Article L614-13 CPI lays down the principle of the substitution of the French patent by a European patent for the same invention:

To the extent that a French patent covers an invention for which a European patent has been issued to the same inventor or his successor with the same filing or priority date, the French patent ceases to have effect either on the date on which the period prescribed for the filing of the opposition to the European patent has expired without opposition having been filed, ie on the date on which the opposition proceedings are closed, the European patent having been maintained.
[...]
The termination or subsequent annulment of the European patent shall not affect the provisions of this Article.

Section 1.2. terms

Thus, the conditions for a substitution are five:

  • a French patent has been issued;
  • a European patent has been granted;
  • the European patent covers the same invention that the French patent;
  • the inventor or his successor is the same;
  • both patents share the same filing date (even if no priority claim is made).

Section 1.3. Effective Date

If the preceding conditions are met, the French patent ceases to produce its effects:

  • if no opposition is formed:
  • if an opposition is formed:
    • at the end of the opposition appeal periods (ie 2 months (A108 EPC) from the service in writing of the decision (R111 (1) EPC)) if no appeal is filed;
    • at the date of the appeal decision (A111 (1) EPC) if an appeal is filed.

Chapter 2. Issue of the scope of the claims

Section 2.1. Claims EP = claims FR

Here, there is no difficulty ...

The French patent disappears simply!

Section 2.2. EP claims> claims FR

If European claims are broader, the judges are also of the opinion that the French patent ceases to produce its effects (Court of Appeal of Paris, November 4, 2014).

Although, strictly speaking, the two patents are not exactly the same invention, the approach of judges is understandable considering that the European patent can cover an object also covered by the French patent.

Section 2.3. EP claims <claims

If the European claims are less broad, the Court of Cassation indicated that the French patent also ceased to produce its effects (C. Cass. com., January 7, 2014, No. 12-28883).

In reality, this is strong questionable (and I am not even sure that the magistrates saw that the scope had been restricted in this case).

Indeed, the doctrine leans rather for a maintenance in force of the French title, but only insofar as the object is not covered by the European patent (ie a kind of Gruyère somehow).

In another case, the judges saw clearly that the European patent had been limited (ie combination of claims 1 + 2 + 4) but decided that there was substitution (Court of Appeal of Paris, Pole 5, 1st ch., June 30, 2015): again, this is questionable, but here more. Indeed, in this case the French "patent" FR 09 50127 had not even been issued: the patent application was rejected before grant (ie in contradiction with the wording of the L614-13 CPI which asks for the existence of a French patent and not a simple request).

Chapter 3. The problem of the lapse of the European patent

Section 3.1. Position of the problem

It may happen that a holder abandons his European patent by non-payment of a French annuity just after the grant (the holder may seek to maintain his patent in another country).

Due to the automatic validation in France of European patents, the question arises as to when the European patent stops producing its effects in France, in order to verify that on the date of the possible substitution the European patent does not exist anymore (and thus to avoid this automatic substitution).

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

  • the date of normal payment of the annuity;
  • the date of payment of the grace period of the annuity;
  • the date of the decision of the director of INPI noting the forfeiture of the French part of the European patent.

Section 3.2. The solution of the Court of Cassation

The judges of the High Court have ruled: a patent ceases to produce its effects following the non-payment of an annuity from the date of the decision of the director of INPI noting the lapse (C. Cass. com., October 18, 2011, No. 10-24326).

This decision is not therefore a simple statement of a fact previously acquired but does produce a legal effect.

3 Comments:

  1. In the case of the judgment of the Paris Court of Appeal, Pole 5, 1st ch., June 30, 2015 (section 2.5), the court considered that the contraction of the claims of a patent of 13 for the French patent to 10 for the European patent, probably in order to avoid having to pay the royalty for claims beyond the 10th, the claims having the same substantive content and being based on an identical description term-term scheme included did not constitute a limitation of the French patent, the claims to be understood with reference to the description.

    Moreover contrary to what you say, the French patent application filed on January 12, 2009 under the number FR0950127 was issued on July 16, 2010 under the number FR2941081. Then an application for extension to Europe will be requested on January 11, 2010 under priority of the French patent and published on October 19, 2011 under the number EP2207154, the latter then replacing the French patent.

    It should also be noted that the appellants in this case have taken refuge behind this substitution claimed by themselves, in order to justify having let the French patent which had been the subject of a proceeding at first instance fall into disuse.

    In this case, the case you use to illustrate your point does not seem appropriate to me.

    • Hello,

      I admit to being a little destabilized ...

      You seem to know the file but some points call me - I answer in bulk:

      • the French patent application filed on January 12, 2009 under the number FR0950127 was issued on July 16, 2010 under the number FR2941081 ": It is not the issue but the date of publication that you mention.
      • probably in order to avoid having to pay the royalty for claims beyond the 10th ": In Europe, it is from the 15th so that does not hold ...
      • the claims having the same substantive content and being based on an identical description term-term included scheme did not constitute a limitation of the French patent, the claims to be understood with reference to the description The fact that the description and the drawings are identical does not mean that the scope is the same (see the divisional mechanism)
      • the latter then substituting for the French patent : No substitution does not occur at this stage (see article)
      • It should also be noted that the appellants in this case have taken refuge behind this substitution claimed by themselves in order to justify allowing the French patent to lapse ": The parties say what they want ...

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