Paris, March 2, 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 establish an overview of the main aspects of the opposition procedure, including the issues that remain unresolved.
This second article of the series is dedicated to the preliminary stages of the opposition including the opposition filing and subsequent admissibility phase.
The opposition must be filed within nine months from the publication of the mention of grant of the patent (R.613-44 of the French Intellectual Property Code (IPC)) (Article 1/5).
The opposition request, as well as other documents, must be filed electronically via the dedicated portal of the INPI (Guidelines B, 2.1.1.). In the event of failure of the portal, the filing can be made by fax subject to further regulations.
The date of receipt of the opposition request at the INPI is the effective deadline for payment of the opposition fee (Guidelines B, 2.2.5.). It is, therefore, essential that the payment be made sufficiently early in relation to the expiration of the opposition deadline. The opposition fee is 600 Euros.
It should be noted that many elements of the procedure may be considered late if they are submitted after the expiry of the time limit for opposition (Article 3/5).
It is possible for several opponents to be party to the same opposition procedure against the patent owner.
This happens when several opponents jointly form the same opposition. In this case, these opponents are considered as a single party (Guidelines B, 1.2.1.). Only one opposition fee has to be paid in this case.
This may also occur when several oppositions are filed separately by different opponents against the same patent (Guidelines B, 1.2.2.). In this case, a fee must be paid for each opposition application. While each opponent is considered as an independent party, the oppositions will be joined by the INPI for examination within the same procedure.
The opponent has the option to be represented by a representative who meets the requirements of the Intellectual Property Code, for example via an IP attorney firm, such as Regimbeau.
Representation is mandatory if the opponent does not have his domicile or headquarters in France, in one of the 27 Member States of the European Union, or in a State party to the Agreement on the European Economic Area (which adds Iceland, Liechtenstein & Norway).
It should be noted that in the event of a joint opposition, a joint representative must be appointed.
The same obligations apply to the patent owner(s).
The language of the opposition procedure is French (Guidelines B, 4.6.). Under penalty of inadmissibility, this applies both to the opposition requests and to the written exchanges during the opposition proceedings.
Documents in a foreign language, such as prior art documents, must also be produced in French or accompanied by a translation. If no translation is provided in response to the invitation of the INPI to do so and the language of the document prevents the INPI or another party from clearly and precisely determining the content and scope of the document, this document may be declared inadmissible.
This leaves little room for the filing of foreign language documents. Until the case law clarifies this issue, a translation is recommended as soon as possible, at least of the relevant passages of any prior art documents.
The language of the oral phase is also French (Article 4/5).
The filing of an opposition request triggers an admissibility examination by the INPI (Guidelines B, 3.1.2.). This examination is not substantive but reviews the formalities of the requests. Grounds for inadmissibility Include, but are not limited to, failure to identify the opponent or the opposed patent is not identified and failure of the declaration of opposition to conform with the relevant provisions of the French Intellectual Property Code.
The non-conformity of the declaration of opposition may, for example, result from the absence of a mention of the scope or grounds of opposition (Article 1/5), a non-compliant statement of opposition, a deficient fee, or a lack of power of attorney or representation.
If the opposition application is filed sufficiently before the expiry of the 9-month deadline, the INPI may notify the opponent of these deficiencies and allow the opponent to correct the opposition request before the deadline (Guidelines B, 3.1.3). After expiration of the opposition period, only an irregularity concerning the power of the representative can be corrected (R.613-44-2).
The decision of inadmissibility is appealable to the Paris Court of Appeal (Guidelines B, 3.1.5.) (Article 5/5).
The limitation procedure must give way to the opposition procedure (L.613-24 IPC). Thus, any limitation procedure in progress at the time the opposition is filed will be terminated. Similarly, when an opposition procedure is in progress, a request for limitation is inadmissible, except when the limitation is required following a nullity action before a court.
A nullity action or an entitlement action may result in suspension of the proceedings (Article 3/5).
Unsurprisingly, the filing of an opposition is a key step that will have repercussions on the entire opposition procedure. In addition, many requirements, such as the use of the French language, that apply to the initial request remain relevant for the remainder of the procedure.
