CABINET CHAILLOT

Decision n°22-10.744 of the French Supreme Court (Cour de Cassation) dated 17/05/2023

Restoration of a patent/patent application in the event of non-payment of a renewal fee

Article L. 612-16 of the French Intellectual Property Code (CPI) concerning restoration proceedings in the event of non-payment of a renewal fee provides as follows:

"An applicant/patentee who has failed to comply with a time limit vis-à-vis the Institut National de la Propriété Industrielle (INPI) may lodge an appeal with a view to having his/her rights restored if he/she can provide a legitimate excuse and if failure to comply with the time limit has as a direct consequence the refusal of the patent application or a request, the lapse of the patent application or patent or the loss of any other right.

The appeal must be submitted to the Director of the INPI within two months of the cessation of the impediment. Any action not taken must be taken within this period. The appeal is only admissible within a period of one year from the expiry of the unobserved period".

Until the Supreme Court’s decision n°22-10.744, practice and case law calculated the two-month time limit for filing an appeal from the date on which the applicant or the proprietor of the patent became aware of the lapse of his/her title. This decision significantly changes standing practice by considering that the two-month time limit for filing an appeal for restoration starts from the day when the applicant's or the proprietor's representative becomes aware of the lapse of the title, the usual addressee of the lapse decision being the representative.

According to the Supreme Court’s aforementioned decision, if the legitimate impediment giving entitlement to an action for restoration is assessed with regard to the person of the applicant, the notification of the decision recording the lapse of a patent puts an end to the legitimate excuse referred to in Article L. 612-16 CPI, whether it is made to the applicant/patentee or to his/her representative, pursuant to Article R. 618-1 CPI.

Consequently, an appeal lodged more than two months after notification to the applicant/patentee or his representative of the decision of the Director General of the INPI recording the lapse of a patent is inadmissible. A representative’s inability to act does not constitute a legitimate excuse vis-à-vis the patentee

While this decision clarifies the time limit for lodging an appeal, it also significantly reduces the time limit that the applicant or the proprietor previously had for lodging an appeal. It is therefore essential that the applicant or the proprietor keeps his/her representative informed of his updated contact details.

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