About the moment when it is certain that a French patent or certificate of utility (or French part of a European patent) has lapsed by non-payment of an annual fee
17.04.1998
The due date for the payment of an annual fee is the end of the month comprising the anniversary of the filing date, even if the patent or certificate of utility has not yet been granted. The first annual fee to be paid is the one in respect of the second year of the patent or certificate of utility life.
The French Patent Office can indicate by phone the last annuity paid and the amount and the date of the payment of the latter. We have to wait an administrative period of time of about 15 days between the payment and the particulars given by the French Patent Office about this payment. If the annuity is not paid at the due date, we have to take into account a period of grace of six months which is given to the applicant or to the patentee to pay the late annuity with a surcharge. If this annuity is no yet paid at the due date + 6 months, a decision* of lapse of patent by the Director of the French Patent Office is communicated to the titular (or his representative) (we have noted that such decisions are sent the last day of a two month period after the six month period given to pay with surcharge). Then, the titular has the possibility to make an appeal before the Director of INPI in order to restore the patent provided he is able to give legitimate reason. This appeal for reinstatement by request to the Director of INPI has to be submitted within a three month term of the date of receipt of the Decision. The legitimate reasons which can be put forward are the same as for restoring a French trade mark registration (see New n° 1 - November 1997 on our WEB site). If the titular is reinstated in his rights, the decision will be effective only if he has paid the fallen due annual fees in a three month term from the inscription of the Decision in the National Patent Register. Of course, the decision of lapse and the mention of an appeal before the Director (and if the prosecution is continued, of the appeal before the Court, and possibly before the Supreme Court) and the decisions appear each time on the National Patent Register. * Such a decision of lapse is drafted as follows : French Republic INPI NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY REGISTERED MAIL WITH ACKNOWLEDGMENT OF RECEIPT Re : PATENT APPLICATION n° .......... Filed on : ........ DECISION CERTIFYING FORFEITURE THE GENERAL MANAGER OF THE NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY CONSIDERING the intellectual property code and particularly its articles L613-22, R613-46, R613-47 and R618-3 ; CONSIDERING the above indicated title WHEREAS the prescribed fees (.. th annual fee) for the maintenance in force of this title have not been paid in due time or have been paid at an insufficient rate ; ON THESE GROUNDS DECIDES UNIQUE ARTICLE : The forfeiture of the rights attached to the above indicated title is certified. Made in Paris, on ..................... The General Manager of the National Institute of Industrial Property See on the verso the conditions and terms for submitting appeals (Instead of decree n 92-251 dated March 17, 1992, refer to articles R.411-19 to R-411-26 of the intellectual property code) The fee for the appeal for reinstatement the amounts to 500 francs. HOW FOLLOW UP THE PRESENT DECISION ? 1ST HYPOTHESIS : You have renounced to the maintenance in force of your title. It is your right. The law makes no obligation to pay the annual fees. It provides for, as alone consequence to the failure of payment, the obligation for the General Manager of the Institute to certify ex officio the forfeiture. In this case, you have not to follow up the present notification. 2ND HYPOTHESIS : You contest the grounds of the present decision, because you estimate having paid the annuity fee in due time. You have the faculty to submit an action for cancellation to the competent court of appeal, according to the decree n° 92-251 dated March 17, 1992 (1) For this purpose you have a term (calculated from the date of receipt of the present decision of ONE MONTH if you live in France, TWO MONTHS if you live in an oversea department or THREE MONTHS if you live abroad. But you can more simply ask the General Manager of the Institute to nullify the decision producing proof of your payment. But, BE CAREFUL, have you well checked that you have paid the annual fee at the exact rate ? In fact, the action for cancellation does not postpone the term to lodge an appeal for reinstatement (See 3rd hypothesis). 3RD HYPOTHESIS : You do not contest the grounds of the present decision but you consider you are able to give a legitimate reason. You can submit an appeal for reinstatement by request to the General Manager of the Institute together with the payment of the prescribed fee. For this purpose you have a THREE MONTH term from the date of receipt of the present decision. But BE CAREFUL if you are reinstated in your rights, the decision will be effective only if you pay the fallen due annual fees in a THREE MONTH term from the inscription of the decision in the National Patent Register. (1) COMPETENT APPEAL COURT. - The appeal has to be lodged to the territorially competent court, to be determined according to the place where the one who lodges the appeal lives. - The opposite table indicate for each of the ten competent appeal courts, the concerned departments (we do not reproduce here this Table, because for foreign people, the Court of Paris is competent). - When the appellant lives abroad, the court of appeal of Paris is competent. An address for service must be elected in the competence area of this court.
