As promised by the INPI, the second and final part of their patent opposition guidelines has now been released. Here is the link to download the full pdf document. And as promised by me, here is now a summary of this new installment. As you will see, we now have a much clearer view of what the opposition à la française is going to look like. As a reminder, the presentation of the first part can be found here.
The opposition procedure consists of an admissibility phase, an instruction phase and a decision phase. I will pick up my comments again at the instruction phase, which starts after the expiry of the 9-month opposition time limit and after the end of the admissibility phase.
Notification of the opposition(s)
The INPI will “immediately” (French text: “sans délai”) notify all admissible oppositions to the patent proprietor and invite them to reply. As a side note, the admissibility phase seems to be ex parte, solely between the opponent and the INPI. I wonder whether the proprietor will be able to challenge the admissibility of the opposition after the so-called admissibility phase.
As to the notion of immediate notification to the patent proprietor, my understanding is that the notification will anyway not take place before the expiry of the 9-month time limit (even if an admissible opposition is filed a few days after the grant of the patent), as the instruction phase only starts after this expiry. Besides, in the case of multiple oppositions, the proceedings are supposed to be consolidated.
Overall timeline of the opposition proceedings
- In its official communication to the patent proprietor, the INPI will invite the proprietor to respond to the opposition within a 3-month deadline, designated as “the first deadline“.
- Within three months from the proprietor’s response, the INPI will communicate to all parties its preliminary opinion on the case, and invite all parties to file further observations within a 2-month deadline, designated as… “the second deadline“.
- If one or more parties file observations within this second deadline, a so-called “written phase” begins. Each party will be invited to comment on the other parties’ submissions within another 2-month deadline – yes, “the third deadline”, you nailed it!
- Then the back and forth stops: no invitation to respond to submissions made within this third deadline will be sent.
- An “oral phase” will take place upon request of one the parties, or on the INPI’s own motion (the expression “oral proceedings” was probably copyrighted).
- If an oral phase takes place, summons to the oral phase will be issued, together with an additional opinion listing the main points to be addressed during the oral phase.
The first, second and third deadlines are not extendable. This means that the timeline is going to be tight, and the parties will have to be very quick.
Oral phase
The oral phase will take place at the INPI, in front of the “opposition commission” (the expression “opposition division” was probably copyrighted). As a reminder, this commission comprises three examiners. The chairperson can decide to add a legal member to the commission. The oral phase is public and will be conducted quite similarly to oral proceedings at the EPO. In particular, the opposition commission may interrupt the oral phrase for an interim deliberation, and the chairperson may then announce an intermediate opinion on one particular aspect. At the end of the oral phase, the chairperson will close the instruction phase of the opposition. It is not clear whether the final decision will be announced orally or not.
For the time being, the guidelines do not mention the possibility to conduct the oral phase by videoconference. I expect that the first hearings will likely not take place before approximately one year from now, which leaves some time for the INPI to decide to add this option, if they so wish.
Decision phase
If an oral phase takes place, the instruction phase ends once the oral phase is closed. In the alternative, the instruction phase ends:
- at the expiry of the second deadline, if the parties have not replied to the invitation and have not requested to make oral observations;
- or at least at the expiry of the third deadline, if the parties have not requested to make oral observations.
The end of the instruction phase is communicated to the parties. Then starts the decision phase, in which the INPI will draft and notify a reasoned decision on the opposition. If a decision is not issued within four months, the opposition will be rejected by default (the infamous “silence vaut rejet” principle). As already mentioned on this blog, the INPI will certainly make every effort so that this never happens.
The appeal deadline will be triggered by the receipt of the decision. As a reminder, the appeal will have to be filed in front of the Paris Cour d’appel, which is an entirely different kettle of fish. The appeal deadline is one month for a party residing in mainland France, two months for a party residing in the overseas territories, and three months for a party residing abroad – a rather unfortunate inequality. Appeal submissions must then be filed within three months after the notice of appeal.
Possible outcomes
The possible outcomes of the opposition are: the rejection of the opposition, the full revocation of the patent, the maintenance of the patent in amended form, but also… the partial revocation of the patent.
This fourth possible outcome is ambiguous in the statute and has given rise to some speculation. The guidelines give the example of an opposition challenging only claim 1, and a proprietor not filing any claim amendment. The INPI could then revoke claim 1 only. I wonder if this situation of partial revocation would also occur if the opponent challenges all claims, but the INPI concludes that only claim 1 is invalid.
In case of a partial revocation, the patent proprietor will be invited to file a request for modification of the patent in keeping with the decision of partial revocation. However, there is no deadline for doing so and no negative consequence if the patent proprietor remains inactive.
Commentators’ suspicions are thus confirmed: the partial revocation procedure does seem kind of messy.
Modifications of the patent
The patent proprietor may file a modification of the patent at at least three stages: within the first deadline, the second deadline and the third deadline set out above. Any modification filed later, especially during the oral phase, will be deemed late-filed. Once the instruction phase is over, no more modification will be allowed.
Any modification of the patent must be occasioned by a ground for opposition raised by the opponent. This is more restrictive than at the EPO, where a modification may be filed to address a ground for opposition not raised by an opponent.
Naturally, amended claims will have to comply with all of the requirements of the Code de la propriété intellectuelle.
Interestingly, the description can only be amended to address the ground for opposition of insufficiency of disclosure. This provision is surprising. I do not expect that an objection of insufficiency of disclosure can frequently be overcome by amending the description – without adding new matter. What this also implies is that the description will not need to and actually cannot be adapted to amended claims. This is partly consistent with the examination guidelines, which do not require – but allow – an adaptation of the description when claims are amended in response to the search report.
Claim amendments can be filed in the form a main request and one or more auxiliary requests, which will be assessed in the order of preference stated by the proprietor, provided that their number is reasonable.
Late-filed submissions
The scope of the opposition and the grounds for opposition cannot be extended after the 9-month opposition deadline. This is more severe than at the EPO, wherein a late ground for opposition may be taken into account by the opposition division if it is prima facie relevant.
Facts and evidence which are not filed in due time by the parties may be admitted into the proceedings, at the INPI’s discretion. Factors to be taken into account include the relevance of the late-filed submission, the circumstances of the late filing and the possibility for all parties to debate it. This will apply in particular to new requests filed on the day of the oral phase.
A new submission made in the instruction phase as a direct and timely reaction to a submission of another party will not be considered late-filed.
It seems that new arguments may not be considered as late-filed. There is even a statement in the guidelines per which the parties should not merely repeat arguments already made in writing, during the oral phase – which sounds like an invitation to submit new arguments on the day of the oral phase.
That said, the boundary between new facts and new arguments probably remains to be determined. For instance, if a novelty objection based on D1 and an inventive step objection based on D2+D3 are raised within the 9-month period, will a new novelty objection based on D2 be considered as a late fact or a late argument (which would therefore be necessarily admissible)? How about an inventive step objection based on D2+D1? or based on D1+D3?
Language
The language of the proceedings is French. Submissions must be filed in this language, otherwise they are inadmissible. French will also be the language used in the oral phase. The parties may bring their own interpreters to the oral phase.
Any exhibit or evidence should in principle be in French or translated into French. Otherwise, the INPI can invite a party to provide a translation within a deadline. It will be interesting to see how this provision will be implemented in practice. The majority of evidence filed in French opposition proceedings will likely be in English (or be translated into English). And it is a fact that all patent professionals, including INPI examiners, are able to read technical documents in English. We will see whether a French translation will be required for documents in the English language.
Stay of proceedings
There are several circumstances in which the opposition proceedings may be stayed: notably in case an ownership claim is filed in court, or if a nullity action is pending (although the judge may order a stay of the nullity suit, in which case the opposition can proceed).
As a more uncommon feature, the INPI may stay the proceedings if information is expected which may impact the outcome of the proceedings; or upon joint request of the parties, for a duration of four months, which can be renewed twice (thus for a total duration of 1 year). This may be useful in case the proprietor and the opponent need time to negotiate.
Apportionment of costs
For reasons of equity, for instance in the case of unjustified late submissions leading to additional expenditure, the INPI can order an apportionment of costs. However, the maximum amount to be apportioned is limited according to the following schedule:
- 600 euros for costs incurred in the written phase.
- 100 euros for costs incurred in the oral phase.
- 500 euros for representation costs.
So the grand total would be 1200 euros, and it would likely only be possible to reach this amount in rather exceptional circumstances.
Therefore, it seems fair to say that parties may just as well completely forget about apportionment of costs, which will not be a factor – except for natural persons. The mere fact of requesting and arguing apportionment of costs may cost more than what may be finally apportioned.
* * *
These are the salient points that I have noted in the second part of the new guidelines.
Now that the first few oppositions have been filed – extremely few in fact, as far as I can tell based on recent issues of the Bulletin Officiel de la Propriété Industrielle – the opposition system is live. I hope readers will share updates on how it goes in practice.
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