Paris, March 16, 2021 – In January 2021, the National Institute of Industrial Property (INPI, i.e. the French Patent Office) published its comprehensive guidelines on the patent opposition procedure. These guidelines are the last stone of a legal edifice, the construction of which began with Article 121 of the PACTE law of May 22, 2019. As a consequence, it is now possible to have a clear view of the procedure. To mark this occasion, we are publishing a series of five articles throughout which we strive to provide an overview of the main aspects of the opposition procedure and to indicate some points that remain unresolved. This third article of the series is dedicated to the investigation phase which is at the heart of the opposition procedure.
After examination of and the declaration of admissibility of the opposition request, the opposition proceeding enters the investigation phase. This investigation phase includes up to four successive phases (R.613-44-6 of the French Intellectual Property Code (IPC)):
At the beginning of Phase 1, the INPI notifies the last patent owner listed in the National Patent Register of any admissible opposition request (R.613-44-6 IPC). The INPI’s reliance upon the National Patent Register makes it essential for French patent owners to ensure that the Register is properly updated or at least that a legal representative, such as Regimbeau, has been appointed and is listed in the National Patent Register.
The notification gives the patent owner a non-extendable 3-month period in which to respond to the grounds of opposition raised by the opponent with observations and/or a proposal for amendment of the patent (Guidelines B, 3.2.1.).
As discussed in the second article of this series, representation of the patent owner by a representative meeting the requirements of the IPC may be required. Where such representation is required and no representative has yet been appointed, the patent owner must appoint a representative within this 3-month period in order to take part in the opposition procedure.
After the expiration of the 3-month period given to the patent owner, the INPI will notify the parties of its investigation opinion within 3 months (R.613-44-6 IPC). This allows the INPI to express its provisional opinion taking into consideration the grounds of opposition raised by the opponent and the response of the patent owner.
With the notification of the INPI’s provisional opinion, a non-extendable two-month period is provided for the parties to submit further observations and/or requests for amendments to the patent (Guidelines B, 3.2.2.). Both the patent owner and the opponent have the same period in which to respond.
If the patent owner and/or opponent respond(s) to the provisional opinion, the INPI will notify the other party of such responses. A second 2-month period is provided for all parties to submit observations and/or requests for amendments in view of the patent owner’s and/or opponent’s initial response to the provisional opinion (Guidelines B, 3.2.3.).
These further responses will be provided to the other party without triggering any further opportunity or deadline for response.
If at least one of the parties so requests through the various written observations, the written phase will be followed by an oral phase (cf. Article 4/5). However, the oral phase is not mandatory and will not be part of the proceedings if it is not requested by one of the parties or deemed necessary by the INPI.
Overall, the patent owner has three opportunities to propose amendments to the patent: during the collection of its opinion in phase 1, during the first 2-month period for response following the INPI’s provisional opinion, or during the second 2-month period of the written phase (R.613-44-6 IPC).
Outside these three periods, any proposed amendments will be considered late and its admissibility will be determined by the opposition committee in charge of the opposition (cf. Article 1/5). More information on the opposition committee is available in the first article of this series.
The proposed amendments may relate to the claims, the description and/or the drawings. Amendments may only be made in response to a ground of opposition invoked by the opponent (L.613-23-3 IPC). Amendments must not extend the subject matter of the patent beyond the contents of the as-filed application, nor of the parent application if the patent is granted on the basis of a divisional application. Further, the amendments may not extend the protection conferred by the patent. In other words, only narrowing amendments to the claims are permitted. Any amendments must comply with other criteria, including clarity, that apply during examination.
The Guidelines strictly construe the law and allow amendments to the description and drawings only in response to an attack of insufficient disclosure (Guidelines B, 4.4.). However, one could imagine that these parts may contain issues of extension beyond the content of the as-filed application or that a limitation of the claimed subject matter requires a change in the definition of the description.
It is permissible to formulate one or more subsidiary request(s) provided that the patent owner clearly specifies the order in which the requests are to be considered (Guidelines B, 4.4.). The number of requests must be reasonable given the nature of the case. Case law must be developed in order to assess what will be considered a reasonable number of requests for any given opposition proceeding.
Any legal grounds, which includes the grounds for opposition and scope of the opposition (e.g., opposition to some or all of the patent’s claims, description, and drawings), raised after the expiration of the 9-month opposition period are inadmissible (Guidelines B, 4.5.).
Factual pleas in support of or opposition to the raised legal grounds must also be timely submitted. The Guidelines define factual pleas as a collection of facts, documents and evidence, and proposals for amendment of the patent. Factual pleas provided after the time limits set by the INPI (see above) will be considered late, but such pleas may be admissible depending on their relevance and the overall circumstances. For instance, factual pleas will not be considered as late if the factual pleas are submitted as the direct consequence of the adversarial debates between the parties and of the overall course of the proceeding.
While the Guidelines make clear that no late-filed factual pleas will be admitted unless the parties have the opportunity to address any such pleas in the adversarial proceedings, case law must be developed in order to know with specificity how tardiness of the factual pleas will be evaluated and what criteria will be used to determine their admissibility. In sum, we recommend providing any legal grounds or factual pleas as early as possible during the opposition proceeding.
The opposition procedure may be suspended for various reasons.
Suspension may be obtained through any written request establishing that (R.613-44-10 IPC):
The INPI may act of its own initiative to suspend the opposition procedure while waiting for information that may have an impact on the outcome of the opposition or the situation of the parties. Case law must be developed to ascertain the conditions of this suspension. One could imagine a party trying to obtain a suspension while waiting for the results of experiments.
A suspension of 4 months, which is twice renewable, is obtained as a matter of right when the suspension is jointly requested by the parties of the opposition. This suspension may be an opportunity for the parties to confer with each other in the context of a mediation or settlement (concerning the advantages of mediation, please see our dedicated article). Compared to the restrictions of the opposition proceeding, a suspension allows the parties significant flexibility and an advantage that if all grounds of opposition are withdrawn, the opposition procedure will be closed (R.613-44-12 IPC).
The investigation phase is heavily regulated and, while it allows the parties to express themselves based on the INPI’s opinion, the parties are subject to limited periods for reply. However, adjustments have been made to loosen the time constraints. The investigation phase culminates in the oral phase, which will be described in the fourth article of this series.
