The opposition battleground

As regular readers of this blog now know very well, the recently enacted loi PACTE authorized the government to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent in France.

This is of course a major change and an exciting development for patent professionals, in particular patent attorneys – but also INPI examiners.

I have had the privilege to work with them over the past few months as part of an opposition training program, and I must say that it has been a real pleasure. They are very well aware of the various challenges that they will face, but also enthusiastic and eager to get into it all.

A draft of the ordonnance as well as of the implementing rules (décret) has been released on November 22. It is in the process of being dissected and commented upon by various professional associations. Just like in my previous post on the draft provisions regarding utility certificates and provisional applications, there may be some changes in the final version. But we now probably have a pretty good idea of what the system will look like.

One convenient way to look at it is to break down the various provisions into two groups: those which are identical to EPO opposition proceedings, and those which are different, or which are specific to French opposition proceedings.

Oh, and I have focused on the main points only.

As an initial warning, whenever I refer to the INPI in the following, it is in fact the Director of the INPI who is formally mentioned in the draft. French law  peculiar: it is drafted as if the head of the patent office were the only person working on cases and issuing decisions…

Let’s start with the familiar waters of EPO-like provisions:

• The time limit for filing an opposition is 9 months from the publication of the mention of grant of the patent. There can be no restoration of right with respect to this time limit, if the would-be opponent misses it.
• Any person can file an opposition. In other terms, no standing is required, and straw man oppositions are allowed.
• Parties must be represented by a patent attorney or an attorney at law if they reside outside of the European Economic Area.
• The grounds for opposition will be extension of subject-matter, insufficiency of disclosure, lack of novelty, lack of inventive step, and the various sorts of exclusion from patentability / exception from patentability.
• The opposition can be filed against all claims or only some of them.
• The notice of opposition must comprise the identity of the opponent, the reference of the opposed patent, a statement of grounds, facts and evidence, the justification that the opposition fee has been paid (the amount of this fee has not been published yet) and optionally the appointment of a representative.
• If the notice of opposition is defective, the opponent gets an opportunity to regularize its filing, but this needs to be done within the 9-month deadline (except for the appointment of the representative). Otherwise, the opposition is rejected as inadmissible.
• If several oppositions are filed against the same patent, they are joined into a single opposition procedure.
• The opposition proceedings comprise a written phase and an oral phase, i.e. oral proceedings are summoned upon request of at least one party or upon decision of the INPI itself.
• The opposition procedure is adversarial – there is thus a right to be heard for each party at every step of the procedure.
• During the opposition proceedings, the patent proprietor may modify the claims of the patent to address a ground for opposition (but please note that the current draft specifies: a ground for opposition raised by the opponent, which is more restrictive than R. 80 EPC).
• Of course, any amendment filed during opposition must not introduce any extension of subject-matter, nor any extension of the scope of protection. The amended claims must comply with the requirements of clarity and sufficiency of disclosure (let’s see whether the INPI adopts the same approach as G 3/14).
• The decision on the opposition has retroactive effect back to the filing date of the patent.
• If the patent is amended, a new patent document is published, once the decision has become final.

Let’s then turn to those provisions which are so French:

• Oppositions can be filed not only against patents but also against utility certificates. However, SPCs cannot be opposed.
• The timeline of the opposition proceedings is slightly different.
  • First the patentee is invited to reply to the opposition, with a deadline prescribed by the INPI (and thus not set in the draft provisions).
  • Then, the INPI sends a preliminary opinion on the case within a 2-month deadline from the expiry of the patentee’s response deadline.
  • This preliminary opinion is communicated to the parties, who are invited to file written submissions within a prescribed deadline.
  • If at least one party files written submissions at this stage, the other parties are invited to file a response within a prescribed deadline.
  • Parties are optionally summoned to oral proceedings.
  • Finally the INPI issues its decision.
• The opposition is deemed rejected if the INPI fails to issue a decision within 3 months from the closure of the examination of the opposition. Said closure takes place either when a deadline to file observations expires, if the parties fail to file observations or request oral proceedings; or at the latest on the day of the oral proceedings.
• Not only the scope, but also the reasons for the opposition cannot be extended after the expiry of the opposition time limit.
• There is no equivalent to art. 105 EPC, i.e. no possible intervention of an alleged infringer after the 9-month deadline.
• The opposition is stayed in case of claim for ownership of the patent in front of the Paris TGI, or if a claim for revocation is pending in front of a court when the opposition is filed, or if the INPI is waiting for information relevant to the opposition or the situation of the parties, or if all parties request so (for a maximum duration of four months, renewable once). This latter provision will be useful in case the parties are in a negotiation process.
• There are four possible outcomes of the opposition proceedings: rejection of the opposition, maintenance of the patent in amended form, full revocation. And the fourth one is: partial revocation. In other terms, the INPI will look at all of the challenged claims one by one and may decide that some of them are invalid and others are valid. In that case, only the invalid claims will be revoked. This stands in sharp contrast with the EPO practice of looking only at a set of claims as a whole, a single defect in the set meaning that it has to go down completely.
• In case of a partial revocation, the patent proprietor will be requested to provide a modified set of claims complying with the partial revocation. The modified set of claims is refused if it is not compliant.
• The INPI may not continue the opposition proceedings in case all opponents have withdrawn their oppositions, or in case the patent has ceased to be in force.
• An examiner having examined the patent application may not work on the opposition, but he or she can be heard during the opposition proceedings.
• A request for limitation is inadmissible if filed when an opposition is pending. If a limitation procedure is ongoing when an opposition is filed, the limitation procedure is closed. But there is an exception if the request for limitation is in the context of a nullity suit.
• Upon request of the winning party, the losing party is ordered to pay part or all of the costs of the winning party, within the boundaries of an official fee schedule (to be determined).
• An appeal against the opposition decision can be filed in front of the Paris Cour d’appel within a one-month deadline from the communication of the decision. The statement of grounds of appeal needs to be filed within a three-month deadline from the notice of appeal. The defendant has a three-month deadline from the communication of the grounds of appeal to file its reply brief and possibly a counter-appeal. The parties will need to act through an attorney at law.
• Third parties may intervene in these appeal proceedings, either in a voluntary or forced manner. Normal rules of civil procedure will apply here.
• The court re-judges the entire case, in fact and in law. It is explicitly stated that the parties can file further grounds, evidence and arguments relative to the first instance. This does not extend to new requests, in the general sense of the term (“prétentions“), unless they are related to an intervention on appeal, occasioned by a new fact, or have the same aim as those filed in first instance, even on different legal grounds.
• All deadlines on appeal are extended by one month for parties residing in French overseas territories and by two months for parties residing abroad.
• The INPI will not be a party to the appeal proceedings. But it gets the opportunity to make written or oral submissions.
• After the appeal ruling, the parties can file an appeal on points of law in front of the Cour de cassation. The INPI can also file such a cassation appeal.
• There is an estoppel principle: a claim for nullity of a patent is inadmissible if a final decision on an opposition having the same object and the same cause has already been issued between the same parties.

This is a lot to process, and it is actually unfortunate that stakeholders have been given only something like two weeks and a half to provide their comments.

This new opposition procedure is a major development, and many provisions may have unforeseen consequences which it would be good to have time to think about.

So far, I have heard colleagues wonder or worry about two points in particular.

One is the automatic rejection of the opposition if the INPI does not issue its decision in due time.

This is one of those so-called SVR (“silence vaut rejet“) provisions that popped up everywhere a few years ago. Such automatic rejection would of course be highly unfair to the opponent.

However, I am not excessively preoccupied. We already have to live with SVR deadlines, and I am certain that the INPI will do whatever it takes not to fall into the trap of an automatic rejection. Besides, we are actually lucky that the SVR deadline is computed from the closure of the examination of the opposition: thus, the INPI will have the complete submissions at hand and can work on its decision within the deadline. It would have been much riskier if the SVR deadline had been computed, say, from the filing of the opposition – regardless of the number and timing of the parties’ submissions.

Another point that has everyone gossiping is the role of the INPI on appeal.

Indeed, the INPI can make submissions. If they make use of this right, it means that they will necessarily side with one party or the other. Besides, they even have the right to file a cassation appeal once the appeal decision has been issued. Isn’t it strange for the patent office to first have to act as an impartial arbitrator between the parties and then become a quasi-party or an actual party to the proceedings at a later stage?

Like my colleagues, I also have questions of my own.

For instance, will the INPI apply EPO-like standards or rather French court standards when examining oppositions?

I am not talking here about the problem and solution approach or about the gold standard, because I do not believe that there is a huge difference between Munich and Paris in this respect. I am mainly talking about claim interpretation. On this particular topic, the EPO and French courts could not be further apart.

The many differences between the proceedings in front of the INPI and at the appeal stage also raise some concerns.

For instance, there can be no intervention in first instance, but there can be on appeal. Furthermore, as far as I understand, the opponent will be severely limited in terms of any new objections that it may come up with in first instance, after the expiry of the 9-month time limit; but new objections, on the other hand, may be allowed on appeal. Isn’t this contradictory?

Once we have the final provisions in front of us, there will be a lot of strategic planning to make, both in terms of patent drafting (think about this notion of partial revocation, which is certainly an incentive to have as many validity fallbacks in a granted patent as possible) and in terms of freedom-to-operate / litigation.

To be continued, for sure!

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