CABINET CHAILLOT

An examination as to the form is carried out. In case of irregularities, a period (generally one month) is given to the applicant for regularizing the application.

In case of non-unity of the invention, the applicant is asked to file a divisional application within 2 months from the notification. This objection can be contested.

In case of priority claiming, the priority document must be filed within a 16-month period from the priority date.

The Examination of the patent application must be requested at the filing.

In the absence of priority claimed, the French Office of Industrial Property (INPI) sends a preliminary search report about 9-10 months after filing. It contains references which may be taken into consideration as to novelty and inventive step, as well as a Written Opinion of the Examiner regarding the patentabilty.

If particularly relevant references are cited, the applicant must answer within a 3-month period once renewable. The response consists either in observations or in amendments to the claims.

18 months after the filing or priority date, the patent application is published in the Official Bulletin of Industrial Property (BOPI), as well as the preliminary search report (citing the cited references) if available (if not, it will be published at a later date).

From the publication, third persons have a 3-month period to file observations and to cite references. The applicant then has to respond within a 3-month period once renewable from the notification of the observations. This procedure is in fact rarely used.

After the examination procedure, which can take 2-4 years, the INPI indicates that the patent is about to be granted. The granting and printing fee has to be paid. The certificate is then delivered about 4 to 8 months later.

Without any further requirements, protection of a patent in France gives also rights in the "Overseas Departments" (Guadeloupe, Martinique, Reunion and French Guyana), in the "Overseas Territories" (Wallis and Futuna, the French Austral Islands and the French Antartic territories), in the "Territorial Collectivities" (St Pierre and Miquelon, Mayotte) and in New Caledonia and dependencies.

An opposition period of nine-months starting as from the date of grant of the French patent is available to third parties, without having to prove standing, to file an opposition on the grounds of lack of patentability, insufficiency of disclosure and extension of subject-matter of the granted patent with respect to the application as filed.

Any transfer or modification of the rights (assignments...) or any modification regarding the owner (name, address...) shall be recorded as soon as possible in the National Register of Patents in order to always be opposable to third ones.

Patent is a title delivered for a term of 20 years from the filing date. However, renewal fees have to be paid each year, from the filing, in order to maintain this title in force, at the end of the anniversary month of the filing.

A patent owner has the obligation of working out the patent. The lack of working out in a state member of the EEC for a 3-year period from the grant of the patent or 4-year period from the filing date (the longer one) or an insufficient exploitation allow a third person to ask for a compulsory licence.

According to Article L. 613-9 of the French patent law “To have effect against others, all acts assigning or modifying rights deriving from a patent application or a patent must be entered in a register, known as the National Patent Register, kept by the National Institute of Industrial Property.

However, an act may have effect, prior to entry, against parties who have acquired rights after the date of such act, but who had knowledge of the act when acquiring the rights.”

No document is required.

We need to know the previous name, legal form and address as last recorded in the French patent register.

To record an agreement of assignment, we have to file an application for the registration of this entry, together with :

• copy of the agreement, which must bear the signatures of both parties ; and
• a French translation of the agreement.

Concerning the agreement, a partial copy can be filed in order to reduce the translation cost.

No original is needed, not notarized nor legalized copy.

We will receive the registration receipt four or five months after the filing of the request (or about one month if swift processing is requested and the corresponding swift fee is paid).

No power of attorney is needed