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:
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.