Today is the day of the "launch" of the opposition procedure before the French Patent Office ("Institut National de la Propriété Intellectuelle" or "INPI").

This procedure is a new way to challenge the validity of a French patent, alongside the claim for invalidity.  

Opposition may be filed against any French patent which mention of grant has been published in the Official Bulletin of Industrial Property as of 1st April 2020.

On the face of it, this "French-style" opposition procedure seems relatively similar to that of the EPO. 

However, its specificities should not be underestimated, and more specifically: 

  • overall shorter time limits before the INPI than those applicable before the opposition divisions of the EPO; 
  •  an apparently more circumscribed oral phase, during which it should in particular not be possible for the patentee to make new proposals for amendments to those made during the written phase;
  •  the impossibility for the INPI to continue the procedure in the event the opponent would withdraw his claim;
  •  an appeal before a court (the Paris Court of Appeal), which implies, in particular, that the parties are familiar with the case law of this court in matters of invalidity and that they anticipate, from the beginning of the proceedings before the INPI, the rules of civil procedure that will be applicable at the appeal stage.
  • More details will be available on the specifics of this new procedure when the INPI publishes its guidelines in this respect.

The practical details of this procedure were specified by INPI in the decision No.2020-34 of 1st April 2020. Further details are expected to be provided by the future INPI guidelines on the opposition procedure.

Due to its specific features, the new opposition procedure requires the assistance, as early as the procedure before the INPI, of a counsel having both technical and scientific competence, experience of the opposition procedure before the EPO and experience of patent litigation in France, in order to determine the best possible strategy with regard to other options (invalidity, limitation, infringement, etc.) in terms of time, cost and chances of success, and to best anticipate the procedural rules applicable before the Court of Appeal, in particular inadmissibility .

August Debouzy's patent team, comprising attorneys at law as well as French and European patent attorneys, has this three-fold expertise and is at your disposal to put it to good use in assessing the appropriateness, preparation and management of opposition proceedings in France.

For more details, download our documentation :

  • DO and DON'T related to this new opposition procedure
  • The main steps of the French-style opposition procedure
  • Answers to all the questions that arise: who can file an opposition? Within what time period? etc.

Download

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.