Patents of Invention
– Book VI of the Intellectual Property Code.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since October 18, 1974.
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Strasbourg Agreement Concerning the International Patent Classification, since October 7, 1975.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), in force since January 24, 1965.
– Patent Cooperation Treaty (PCT), since February 25, 1978.
– European Patent Convention 2000, since December 5, 2007.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since August 19, 1980.
– WTO’s TRIPS Agreement, since January 1, 1995.
– London Agreement on the application of Article 65 EPC (in force since May 1, 2008).
– Patent Law Treaty, ratified since January 5, 2010.
Kinds of industrial property titles: Patents of Invention, Certificates of Utility (C.U.) and Supplementary Protection Certificates (S.P.C.).
Right to obtain a patent: belongs to the inventor or his successor in title. No assignment form needs to be filed. In proceedings before the French Patent Office (INPI), there is a presumption of ownership in favor of the applicant.
Applicant: any natural person or corporate body. Natural persons, small or medium-size businesses and non-profit institutions of the teaching or research sector may benefit from reduced filing, examination and grant fees as well as annual fees up to the 7th.
Invention made by an employee: belongs to the employee, except where the invention is made in the execution of a work contract comprising an inventive mission or of studies or research activities, which have been explicitly entrusted to him. Where the invention is connected with the business of the employer, the latter has the right to claim the ownership or the enjoyment of the patent subject to payment of a fair price to the employee.
Naming of the inventor: named upon filing or within sixteen months from the filing/priority date. The inventor may oppose such identification.
Protection for foreigners: the same as for nationals, subject to reciprocity. Applicants without any place of residence or business in France shall appoint a local representative (except for the mere act of filing).
Patentability conditions: novelty, inventive step and industrial applicability.
Exceptions to protection: discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers, presentations of information, when considered as such. Methods for treatment of the human or animal body by surgery, therapy and diagnostic methods, and inventions contrary to morality, such as human embryos for commercial or industrial purposes, or to public order.
Plant varieties may be protected (see “VII. New Plant Varieties” below).
Drugs: patentable (see “SPC” III. below).
Inventions in the microbiological field: microbiological processes and the products obtained directly by the processes are patentable.
Microorganisms: a culture of the microorganisms must be deposited. The specification of the patent must mention the place and the date of the deposit of the culture.
Opposition to a patent/patent application: every legal entity or natural person can file an opposition based on: (a) lack of novelty, inventive step, or industrial application; (b) exclusions and exceptions to patentability; (c) insufficient disclosure; (d) extension of the subject matter of the patent beyond the content of the patent application as filed. No legal interest is requested. The opposition must be filed within nine months from the publication date of the mention of the patent grant in the Official Bulletin of Industrial Property (BOPI). After an admissibility examination, the owner must file a response to the opposition. The INPI will issue a notice at the latest three months after the response from the owner. An exchanges phase begins between the owner and the opponent. The instruction phase may end with an oral hearing. The owner may amend the opposed patent if the amendments made meet a ground for opposition. In the end, the patent can be revoked in whole or in part, maintained in amended form, or maintained as granted if the opposition is rejected. The decision will be subject to appeal before the Paris Court of Appeal within one month from the notification of the opposition decision. The French Patent Office silence within four months from the date of the end of the instruction phase shall be considered as a rejection of the opposition.
Novelty: the invention must not have been available to the public, either by publication, communication, public use or in any other way, in France or in any country, before the filing/priority date, nor described in a prior French patent application, or in a European or international patent application designating France, which has been filed before the filing/priority date, and published after this date. Subject to very strict conditions (international exhibitions, obvious abuse detrimental to the applicant or his legal predecessor), prior art may not be taken into account.
Inventive step: the invention shall imply an inventive step, if it is not obvious for a person skilled in the art to make the invention on the grounds of prior art (applications published after the filing/priority date are not part of the prior art). To assess his analysis the Examiner should take into account general knowledge and prior art before the filing or priority date of the patent (no a posteriori analysis). The French approach takes up some elements of the problem-solution approach of the EPO. Patent applications filed after May 22, 2020, are fully examined. They can be rejected for lack of inventive step. INPI is now in charge of the examination, not only of the criteria of novelty (full and complete and no longer only of the "manifest" lack of novelty), but also of the criteria of inventive step.
Priority: priority of an application filed in a country having adhered to the Paris Convention or a member of the World Trade Organization may be claimed. One or more or partial priorities may be claimed. The priority of a prior French application may also be claimed. The applicant may request restoration of priority right within a period of two months from the expiration of the priority term; a legitimate excuse is required.
Territory covered: see Section 1. “General Information“.
Provisional Patent Application (PPA): the request for filing must indicate that it is a PPA. The filing of claims and an abstract can be deferred. The formal and substantive examinations carried out by INPI are postponed. The PPA creates a priority right. The conversion into a "regular patent" or the conversion into a C.U. must be submitted to INPI within twelve months after the filing if not, the PPA is rejected. The provisional patent application, a claim which defines the scope of the protection and an abstract are requested for the conversion into a classical patent. Search fees must be paid within one month after the conversion request.
Certificate of Utility (C.U.): is similar to a patent, except for its duration (ten years). The grant proceedings do not include any search step (no search fees are required) or any examination of the patentability study. However, any infringement proceedings involve the drawing up of such a search report. Conversions: conversion of a C.U. application into a patent application is allowed for applications filed since January 11, 2020 and must be filed within sixteen months after the filing of the utility certificate application. Search fees will be due (identical to the one due when filing a French patent application). INPI will then examine the patent application resulting from the transformation of the utility certificate application, according to the same patentability criteria as those applicable to a patent application.
Filing requirements for an application:
1. A patent application form;
2. A specification, including claims in French or any foreign language (a French translation must be filed within two months from the filing date), typed on A4 paper, inside a frame of 17 x 25.7 cm, with no more than 40 lines per page);
3. Drawings, if any (without any text, on A4 paper, inside a frame of 17 x 26.7 cm);
4. An abstract, summarizing the technical content of the invention (max. 250 words or 150 words with a drawing);
5. If priority is claimed, mention of the country and date of the prior application.
Notes: power of representative is neither required for a qualified French patent attorney nor for an “Avocat” (French attorney-at-law). If claiming priority, the filing number of the prior application shall be provided within sixteen months from the priority date. Multiple priorities or partial priority are possible. Priority document (simple copy) shall be filed upon filing or within a period of sixteen months from the priority date. A priority right assignment is required where the current applicant is not the applicant of the prior application. Search fee shall be paid within one month from the filing date.
Electronic filing: only available for people officially qualified in IP.
Minimum requirements (for obtaining a filing date):
1. A patent application form;
2. Information regarding the applicant;
3. A description or reference to a prior application indicating the filing date, number and Office of said prior application.
Note: the file has to be completed within two months (translation into French in particular).
National defense: prior to expiry of a five-month period from the filing of a patent application, the prohibition of the disclosure and free work of the corresponding invention may be decided by the Ministry of Defense, for a renewable period of one year.
Examination (formal procedure): made in every case to detect obvious deficiencies, including lack of unity.
Examination (substantive procedure): administrative and technical examination of the application as to legal requirements, drawing up of a preliminary search report (see below), possible reply of the applicant to the preliminary search report, grant of the patent.
Accelerated examination: as such not provided for, however, a Patent Prosecution Highway (PPH) program with the Japan Patent Office (JPO) is established since January 1, 2021.
Divisional applications: may be filed from the filing date up to the payment of the grant fees. The filing of a divisional application may be requested by the Patent Office where several inventions are claimed in the same application (non-unity). A divisional application enjoys the filing/priority date of the parent application.
Publication: application files, including the specification, preliminary search report and reply to the latter, are automatically made available to the public eighteen months after the filing/priority date. An earlier publication may be requested by the applicant.
Search report: lists publications considered relevant in a form similar to PCT or EP search reports. Search is carried out by the European Patent Office. The report is accompanied by the opinion of the Search Examiner as to the patentability of the invention. Where a French patent application claims benefit of a foreign priority, the applicant may be requested to communicate all prior art cited in the course of examination in other countries.
Reply to the search report: compulsory where relevant documents are cited (“X” or “Y”), within a renewable period of three months; reply may consist in filing amended claims and/or remarks justifying patentability and/or inventive step in regard to cited documents.
Observations: may be presented by third parties from the publication of the application up to three months after the publication of the preliminary search report; the applicant may file a reply.
Closing of the examination proceedings: drawing up of a final search report categorizing the documents into relevant documents and documents of the related art, taking into account remarks, observations and amended claims. Except in cases of manifest lack of novelty, a patent is generally granted, based on the (amended) claims and published. For patent applications filed after May 22, 2020, a full examination is carried out.
Publication: the grant of the patent is published in the Official Bulletin.
Scope of protection: defined by the claims.
Beginning of protection: filing date.
Duration: twenty years from the filing date for patents; six years from the filing date for certificates of utility. For complementary certificates of protection (pharmacy), see III. below.
Maintenance fees (annuities): due on the last day of the anniversary month of the filing. It is not possible to pay the annuities in advance, except for the one due in the current year. If an annuity has been paid prior to the end of the anniversary month and if an official tax increase has been decided before the due date, the increase is to be paid in due time to keep the payment valid.
Annuity grace period: six months (with fine) computed from the following day on which the annual fee becomes due.
Restoration of a lapsed patent for non-payment of an annuity: in case of hindrance, possible when requested within a period of two months from the hindrance ceasing and within one year from the expiry of the grace period during which the annuity should have been paid.
Marking of patented goods: not compulsory; no recommended form.
Assignments of patents and grant of licenses: must be in writing; should be recorded in the Patent Office Register to be effective against third parties (evidencing documents are required and translated into French of the relevant extracts).
Co-ownership: legal provisions provided for in the law, applicable only in the absence of agreement between the co-owners.
Modification of Protection after Granting
Post-grant limitation: a limitation procedure, similar to the one in EPC 2000, is in force since January 1, 2009 for the patent owner. It would seem to apply both to French patents and to the French parts of European patents.
Action for revocation: may be instituted at any time by any interested party before the “Tribunal de Grande Instance” (T.G.I.) of Paris.
Abandonment of the patent: allowed, only by patent owner.
License of right: no longer applicable.
Compulsory license: may be imposed upon request of any interested party in case of lack of working without legitimate excuses after the expiry of a period of three years from the date of grant or four years from the filing date. The action is to be brought before the “Tribunal de Grande Instance” (T.G.I.) of Paris. A compulsory license is always non-exclusive.
License of dependence: a patentee may obtain a license of a prior patent necessary for the working of his patent if the improvement is an important progress compared to the prior patent. The prior patentee may reciprocally obtain a license of the patent protecting the improvement. The action is to be brought before the “Tribunal de Grande Instance” (T.G.I.) of Paris.
Ex officio license: may be imposed (1) if the patent covers drugs or remedies or a process for the preparation thereof and if the corresponding drugs or remedies are made available to the public in insufficient quantity or quality, or at abnormally elevated price; (2) if working of a patent is insufficient and gravely prejudices the economic development and the public interest; or (3) for the needs of national defense.
Is considered as an infringement (for a patent as well as for a Certificate of Utility): (1) to manufacture, to offer, to put on the market, to use, to introduce into the French territory or to keep the goods or the object of the patent; (2) to use the method object of the patent, or, when circumstances make it obvious that the use of the method is forbidden without the consent of the patent owner, to offer to use the said method; (3) to offer, to put on the market, to introduce into the French territory or to hold the product obtained directly by the patent method; (4) to deliver, or to offer to deliver, means for working the patented invention when it is obvious that these means are apt or intended for this working.
Limitation to infringement: the offer, the putting on the market, the use or the possession with a view to use or put on the market of an infringing product, when such acts are committed by someone other than the manufacturer of the infringing product, are considered as an infringement only when these have been committed with full knowledge of the facts. There is no infringement concerning goods when the goods have been commercialized in the European Union by the owner of the patent or with his consent (exhaustion of rights doctrine). The rights provided by the patent shall not extend to (a) acts done privately and for non-commercial purpose, (b) acts done for experimental purpose relating to the subject matter of the patented invention, (c) the extemporaneous individual preparation of a medicine in a pharmacy in compliance with a medical prescription or acts concerning the medicine to prepare, (d) studies and tests required for obtaining authorization to market a drug, and acts necessary for their realization and for obtaining the authorization to promote a drug with the professionals and (e) for the objects intended to be launched into extra atmospheric space introduced into the French territory.
Prescription: civil actions for infringement are prescribed within five years. The five-year limitation period runs from the knowledge by the right holder of the last fact enabling him to bring the action. This prevents the limitation period from running when the infringement was not known and seems to allow compensation to be claimed for all acts of infringement, regardless of when they occurred.
How to act: (1) action against infringement may be taken by the owner of the patent or in the case of owner’s refusal, by an exclusive licensee. A licensee, exclusive or not, may join the action; (2) events occurring before publication of the application or before notification by a certified copy to the alleged infringer, cannot be prosecuted; (3) an action for infringement is usually preceded by a seizure (“saisie”) which obtains evidence of the infringement and information about the scope of the latter. An ex parte order from the president of the “Tribunal de Grande Instance” (T.G.I.) of Paris is required before the seizure. The seizure may be conducted e.g. in the factory where the infringing goods are produced and/or in the shops where the goods are sold. A complete description of the method and/or of the goods is established through a bailiff (“huissier”) assisted by a Patent Attorney, with no possibility for the infringer to oppose this seizure. Specimens of the goods may be seized for evidentiary purposes. The “Tribunal de Grande Instance” (T.G.I.) of Paris is the competent forum in patent matters, subject to appeal before the “Cour d’Appel de Paris”. The competent Tribunal must be referred to within twenty working days or thirty-one calendar days from the date of the seizure. The infringer may be compelled to stop his activity by the first level decision, even if appealed.
Penalties for infringement: when the infringement is confirmed by a court decision, the infringer is compelled to stop the infringing action and is sentenced to pay damages to the patent owner and possibly to the licensee. The amount of damages may take into account the benefit that would have been obtained by the patentee and/or licensee if infringement had not occurred, the benefit obtained by the infringer and moral prejudice, the royalties which would have been paid to the patentee, depending upon the context. Confiscation of the infringing products and/or means of production or destruction of the latter may be decided. The court may decide that a copy of the decision be published in newspapers or magazines at infringer’s expenses. Penal punishment may also be available including prison (three or five years) and/or penalties (maximum 300,000 or 500,000 EUR), subject to a separate action before a criminal court (rarely used).
Preliminary injunction: any patentee or exclusive licensee may request measures to prevent infringement or continuing infringement.
Declaratory judgment: any manufacturer may ask a court to decide whether his products are to be considered an infringement of a specific patent. The patentee should have been consulted prior to the request and his answer considered non-satisfactory by the manufacturer.
Rights derived from a European Patent
France may be designated in a European patent. A European patent designating France confers the same rights as a French patent.
European patent validation requirements: (a) appointment of a national representative is optional; (b) no translation is required under Art. 65(1) EPC (see below details); (c) the minimum time period for paying renewal fees due at validation is two months.
For a European patent granted after May 1, 2008, which is not written in French (a) it is no longer necessary to file a French translation at the French Patent Office; (b) however, provision is made for filing claims in French at the French Patent Office in the following cases:
– provisional protection, i.e. French translation of the claims of a published European patent application, if the application was filed in English or German;
– revised translation into French of the claims after grant;
– translation into French of the claims as used in a litigation.
In the cases quoted under (b) the restriction of the protection by the French text of the claims is maintained. There is also the case of a European patent which now comes to be maintained in a modified form after opposition, but has been granted before May 1, 2008. As a cautionary measure, a full translation may be filed within the prescribed term, as in the past, until the case law is firmly established.
When France is designated in a PCT application, said designation is considered as an application for a European patent (designating France) according to the provisions of the European Patent Convention, even if no other European country is designated.
France has ratified Chapter II of the PCT (preliminary international examination).
Time limit for entering the regional phase under both Chapters I and II: 31 months.