Paris, March 31, 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 fourth article of the series is dedicated to the oral phase, which is the culmination of the investigation phase of the opposition.
The oral phase is not automatically a part of each opposition proceeding. The oral phase will be a part of the proceeding if any party to the opposition so requests during the written phase, which is discussed in the third article of this series (R.613-44-6 of the French Intellectual Property Code (IPC)). The request may be made at any time up to the termination of the investigation phase (Guidelines B, 3.2.4.).
The opposition committee may also invite the parties to an oral phase of its own volition.
This oral phase is expected to be held almost systematically unless the parties otherwise agree beforehand. The parties are unlikely to deprive themselves of the opportunity for an oral presentation before the opposition committee.
The parties may attend or be represented by their industrial property attorney.
The summons to the oral phase will be accompanied by a supplementary opinion indicating the items relevant to the decision and/or requiring additional information (Guidelines B, 3.2.4.). This supplementary opinion is merely informative and is not binding on the opposition committee.
As required by the circumstances, such as in the event of complex legal problems including, by way of example, the validity of a contract or hearing of witnesses, the opposition committee may call upon the services of a legal expert from the INPI (cf. Article 1/5). The need for an expert’s intervention is decided by the referent examining engineer of the opposition committee, and the parties are notified of the legal expert’s presence as soon as possible before the day of the hearing. Generally, the parties will be informed of the expert at the time that the parties receive the summons to the oral hearing. The intervention of this legal expert in the committee was modelled on the procedure before the EPO.
The parties may request that persons not entitled to represent them, such as a witness, inventor, or technical expert, make a statement during the oral hearing. The term “statement” suggests that the parties will not be able to question the witness, inventor, or expert. However, as noted above, the opposition committee’s legal expert is to be available in the event of a witness hearing.
Therefore, only time and experience with these new proceedings will tell how witness hearings will be conducted.
Any requests for statements during the oral phase must be approved by the opposition committee, and this request should be submitted to the committee as soon as possible after the summons is received. No unscheduled and unauthorized statements may be made on the day of the oral hearing (Guidelines B, 3.2.4.).
Any other person may attend the oral hearing since the hearing is open to the public. However, the INPI requests that such persons provide advanced notice of attendance for organizational purposes. For reasons of organization or confidentiality, access to the hearing may be limited or closed. It is unclear under what other circumstances the hearing will be closed or who is responsible for the decision to limit attendance.
The oral phase before the INPI is expected to resemble the opposition oral proceedings before the European Patent Office, with certain distinctive features.
The debates are led by the referent examining engineer of the opposition committee. The referent is assisted by the other two members of the committee (cf. Article 1/5).
The oral phase, which constitutes a hearing of the parties, takes place in French (cf. Article 2/5).
At the outset of the proceeding, the parties outline their claims. Any claims presented for the first time at the oral phase are considered late, and their admissibility will be debated by the parties and subject to approval by the committee (Guidelines B, 3.2.4.).
Oral arguments are focused on those points necessary for the committee to render its decision, which may include the items outlined in the supplementary opinion and those points whose relevance emerges during the oral arguments.
The Guidelines indicate that opponents will usually speak first and the patent owners will be given the last word and may respond to each opponent in proceedings involving multiple opponents. Each member of the committee may ask questions during the oral arguments.
The referent may suspend the hearing in order to confer with the other committee members in the absence of the parties. Upon resumption of the oral arguments, the committee may provide an interim opinion on such items discussed among the committee members. It is envisioned, though not established, that the decision of the commission will be announced at the end of the oral hearing as is the common practice of oral proceedings before the EPO.
At present, the Guidelines do not address the possibility of a remote hearing such as oral hearings by videoconference.
The oral phases before the INPI are expected to resemble the oral opposition proceedings before the European Patent Office, in which Regimbeau’s attorneys regularly participate. After the oral phase, the INPI still has to issue a reasoned decision subject to appeal. This will be the subject of the last article in this series.
