13.2.1 INPI
INPI is responsible for granting, denying and maintaining in force French industrial property titles, including those for designs, patents and trademarks. Since “classic” European patents designating France are subject to the same legal regime as national patents, INPI performs the same maintenance-in-force functions for the French part of those patents.
Those functions are part of the broader mandate of INPI to promote innovation by:
centralizing and disseminating all information necessary for the protection of innovations;
approving or amending the specifications for geographical indications that protect industrial and commercial products; and
taking any initiative aimed at the ongoing adaptation of national and international law to the needs of innovators and businesses.
INPI is also responsible for maintaining the National Register of Companies (RNE) and disseminating RNE information to the public.
Other functions performed by INPI include serving as secretariat for the CNIS (see Section 13.4.5) and participating in the organization of related professions, including maintaining the national list of qualified industrial property specialists,4 organizing the examinations for inclusion on that list and maintaining the list of industrial property attorneys.5
In organizational terms, INPI is a public administrative body established in 1951. By law, its Director General's decisions – concerning the grant, rejection or maintenance of industrial property titles – are subject not to administrative review but to review by judicial bodies, with the Paris Court of Appeal having exclusive nationwide jurisdiction over appeals against such decisions in patent matters (relating, for example, to application denials and opposition).6 The jurisdiction of judicial bodies also extends to liability actions brought against the Director General in connection with such decisions (see Section 13.2.1.5).
INPI provides local support for innovation through regional offices, helping companies to integrate industrial property into their business strategies.
The following sections outline the procedures followed by INPI for examining and granting patent applications and for considering opposition and limitation actions brought against such applications, each compared with the corresponding procedures followed by the EPO (Sections 13.2.1.1 to 13.2.1.3). The ceasing of effect of French patents is covered in Section 13.2.1.4.
The payment of annual maintenance fees and the rules governing the registration of patents in the National Patent Register (RNB) are covered in Sections 13.2.1.5 and 13.2.1.6.
13.2.1.1 The grant of French patents
Patent applications filed with INPI are initially subject to secrecy and may not be disclosed or exploited without prior authorization from the Director General of INPI, acting on the opinion of the Minister responsible for defense.7 This mechanism allows the French State to reserve the invention for itself by keeping it confidential, where its potential value to the country is deemed to warrant delaying or prohibiting its disclosure, or where such disclosure is considered prejudicial to defense or national security interests. Such INPI authorization is otherwise obtained automatically five months after filing and is generally granted in practice within a few weeks.
Following a formal examination and verification that the invention is not unpatentable,8 INPI issues and provides notification of a preliminary search report. If the search yields relevant documents, notification of the report triggers a three-month (renewable) response period, during which the applicant may submit observations or amend the application. This initial three-month period also applies to any third-party observations.
Article L. 612-21 of the IPC provides that INPI will publish the file of any patent application after a period of 18 months from the date of filing – or, if priority has been claimed, from the priority date. The application can be published earlier at the request of the applicant.
If the preliminary search report is established prior to the publication of the application (this would typically be the case for a first French filing), the three-month deadline for third party observations will run from the publication of the application.
Until 2020, INPI's power to reject patent applications was limited. The INPI Director General could do so on the following main grounds:9
for formal reasons;
in the event of amendments extending beyond the subject matter of the application as filed, or not supported by the description;
if the application related to a manifestly non-patentable invention; or
if the search report manifestly indicated a lack of novelty.
Challenges to such rejections related primarily to patentability, in particular that of computer-implemented inventions.
For patent applications filed since May 22, 2020, INPI has examined inventive step, and the Director General has been empowered to reject:
Any patent application:
[...]
7. the subject matter of which is not patentable within the meaning of Article L611-10, para. 1.10
In addition, the adverb “manifestly” has been deleted from some of the other grounds listed, thus empowering INPI to examine all conditions of patentability. Accordingly, the current procedure is as follows:
Following the responses to the preliminary search report, the examiner considers the pending claims. If they do not appear patentable, the applicant is notified to that effect and allowed two months to respond.
If the applicant’s response is not deemed satisfactory, the examiner issues a draft decision of rejection (total or partial); the applicant is so notified and allowed another two months to file a request for continued processing.
If the applicant’s response is deemed satisfactory, the examination continues; if the applicant does not respond, the application is rejected.
The rejection decision may then be appealed to the Paris Court of Appeal, subject to the conditions and time limits set out in Section 13.2.1.5.
INPI also grants utility certificates with conditions of validity identical to those for patents (i.e., the invention must constitute patentable subject matter, be novel, involve an inventive step and be capable of industrial application). Suitable for inventions with shorter lifespans, the utility certificate protects the invention for a term of 10 years (compared to 20 years for a patent). It allows the applicant to obtain a title at the end of a streamlined procedure that, in principle, does not require a prior art search.
A utility certificate application may be converted into a patent application if the request is made before the start of technical preparations for publication of the application – specifically, more than six weeks prior to commencement of an 18-month period from the filing or priority date.11 A patent application can likewise be converted into a utility certificate application subject to the same time limit.
INPI does not prepare search reports for utility certificates; it conducts only a formality examination. Applicants may amend their claims. In the event of litigation, however, the law12 provides that the applicant must produce a search report subject to the same conditions as for a patent application.
13.2.1.2 Administrative challenge to the title: opposition before INPI
Oppositions may be filed against French patents granted as from April 1, 2020. As indicated in the report presented to the President of the Republic on the PACTE Act, relating to reforms contained in that legislation, the right of opposition is recognized as a simple and inexpensive administrative procedure permitting judicial proceedings to be avoided in less complex cases. The opposition procedure thus complements the patent grant procedure in France, allowing French law to align with the practices of other industrial property offices in Europe and worldwide. By facilitating the revocation or amendment of legally fragile patents, this opposition procedure serves to strengthen the quality of French patents and the legal certainty of the protection conferred by industrial property titles.
While modeled on the opposition procedure established by the EPO, the French procedure has its own particular characteristics, both before INPI and before the Paris Court of Appeal. A notable difference, in addition to the procedural aspects discussed below, is that INPI examiners who process a grant may not process oppositions filed against it.13 Costs are borne in principle by each party but may also be apportioned, if equity so requires, within a limit fixed by order.14
The time limit for lodging a notice of opposition is nine months from the date of publication of the grant.
The grounds for opposition under Article L. 613-23-1 of the IPC are similar to those provided for in Article 100 of the EPC:
The procedure before an opposition board initially includes a phase for verifying the admissibility of the opposition.
If the opposition is found to be admissible, a substantive investigation phase begins, during which observations are elicited first from the patent owner and then from the opposing party in response. Amendments to the original patent (“auxiliary requests” in European terminology) may also be proposed during this phase. The patent owner is allowed a non-renewable three-month time limit for those purposes. Following the expiry of that period, the opposition board notifies the parties of its provisional opinion based on the notice of opposition and the patent owner’s response. The parties are then allowed a non-renewable two-month time limit to respond to that provisional opinion.
A written phase then begins: INPI notifies the parties of the responses received, opening a non-renewable two-month time limit for the submission of further observations (and further amendments by the patent owner). Upon expiry of that period, the further observations received are transmitted to the parties for information, bringing this written process to an end.
At the request of a party, or on INPI’s own motion, an oral phase may then begin. The notice convening such a phase may be accompanied by an agenda. The session is then organized similarly to oral proceedings before an EPO opposition division: in particular, the opposition board may provide interim opinions and generally announces the decision it intends to take. The end of this oral session marks the end of the substantive investigation phase.
A final decision phase then lasts no more than four months, during which the opposition board approves the minutes from the oral session and reaches its decision.
The entire procedure may be summarized as follows, based on the most common scenario (in which the parties respond to all invitations and request an oral session):
Time limit for the opposition request: nine months from publication of the grant.
Verification of admissibility: two months.
Receipt of the patent owner’s observations: three-month non-renewable time limit.
Provisional INPI opinion: within three months from expiry of preceding time limit.
Receipt of parties’ responses: two-month non-renewable time limit (from date of INPI’s provisional opinion).
Receipt of parties’ further observations: two-month non-renewable time limit (from transmission by INPI of previous reactions).
End of written phase, oral session convened.
Decision: within four months following the end of the oral session.
Notification of the opposition board’s decision triggers a one-month time limit for appeal, extended, depending on distance, for parties residing in the 12 French overseas territories (by an additional month) or abroad elsewhere (by an additional two months), as per ordinary appeal procedures.15
Recourse in such cases to the Paris Court of Appeal, as discussed below (Section 13.2.2.5.2), differs significantly from that before EPO boards of appeal, in that the proceedings are conducted on a devolutive basis (the parties may submit new arguments and new evidence, though not new claims). Another significant difference is that the Court of Appeal applies the general rules on the reimbursement of costs under the Code of Civil Procedure (CCP), and may therefore award the successful party substantial sums as reimbursement for attorney fees. Finally, judgments of the Paris Court of Appeal are subject to appeal before the Court of Cassation under the conditions of ordinary law.16
13.2.1.3 Administrative limitation of the patent
By a law of August 4, 2008, an administrative limitation procedure was established for French patents,17 allowing patent owners to voluntarily limit the scope of their protection.
Such a request for limitation applies not only to French patents but also to the French parts of “classic” European patents.18
The limitation procedure before INPI is similar to that before the EPO.
The decision of the INPI Director General on this question may be appealed to the Court of Appeal, but not by third parties (including, in particular, alleged infringers where the limitation is invoked during litigation). Such third parties may, however, bring an action for annulment of the patent, as so limited, before a lower court.19
13.2.1.4 The ceasing of effect of French patents
Article 139(3) of the EPC provides that any Contracting State may prescribe whether, and on what terms, an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications and patents.
Exercising this freedom prior to the entry into force of the Agreement on a Unified Patent Court (UPCA), on June 1, 2023, French legislators had adopted a principle that such inventions could not be protected simultaneously by both applications and patents.
Now, however, Article L. 614-13 of the IPC, on the ceasing of effects, distinguishes between whether or not the European patent has been subject to an opt-out from the jurisdiction of the Unified Patent Court (UPC).
If the European patent has not been subject to such an opt-out, the French patent continues to produce its effects (Article L. 614-13(II)).
If the European patent has been subject to an opt-out from UPC jurisdiction, the French patent ceases to produce its effects:
at the end of the opposition period for the European patent (in the absence of an opposition); or
at the end of the opposition procedure; or
on the date of recording of an opt-out for the patent from UPC jurisdiction (if this date is later than the end of the opposition period or the end of the opposition).
The French patent thereby ceases to produce its effects only to the extent that it covers the invention for which the European patent has been granted. Thus, unless some of the claims of the French patent are not included in the European patent, the ceasing of effects is total.20
That ceasing of effects occurs only at the end of the opposition period (in the absence of an opposition) or at the end of the opposition procedure (where the European patent is maintained). It occurs only if the European patent exists at the time of the ceasing of effects.21
If the ceasing of effects does not occur solely because the European patent has not been subject to an opt-out from UPC jurisdiction, it occurs when such an opt-out is recorded.
The law specifies that such ceasing of effects for the French patent is irrevocable, and thus not affected if the European patent subsequently lapses, or is revoked, or if the opt-out is subsequently withdrawn.
Lastly,
Article L. 614-16-4 of the IPC prohibits and renders null and void the transfer of a French patent application or a French patent, independently of the corresponding European patent with unitary effect;
Article L. 614-15 of the IPC requires a judge hearing an infringement action based on a French patent liable to cease producing effects to stay the proceedings until the end of the opposition period for the European patent (or until the end of the opposition procedure).
13.2.1.5 Payment of fees and maintenance in force of titles
Under the law, INPI is also responsible for monitoring the maintenance of titles (and therefore also of applications) for French patents and the French parts of “classic” European patents (that do not have unitary effect).
Annual fees fall due (as before the EPO) on the last day of the anniversary month of the filing of the application. The filing fee covers the first annual fee.
In the event of non-payment, INPI issues a warning before forfeiture, the payment of the annual fee may take place within a six-month grace period from the day following the due date (i.e., from the first day of the month following the anniversary month of the filing, unlike the “ultimo-ultimo” rule of the EPO). The absence of a warning, however, is not a ground for restoration.
Failing payment within the six-month time limit, INPI issues a forfeiture decision.
As in the case of failure to comply with other time limits during the grant procedure, such forfeiture may be subject to a petition for restoration: the time limits are the same as those under Article 122 of the EPC:
The difference from the mechanism established in the EPC is that INPI accepts as a legitimate excuse an error committed by the representative, whether the latter is external or in-house.
Once again, the decision of the INPI Director General to deny a request for restoration may be appealed by the applicant (or the owner in the case of an annual fee payment) before the Paris Court of Appeal.
13.2.1.6 The National Patent Register
Article L. 613-9 of the IPC provides that, in order to be opposable to third parties, all acts transferring or modifying the rights attached to a patent or patent application must be recorded in the National Patent Register. This register is kept by INPI to record grant, rejection and forfeiture decisions.
This recording requirement does not apply, however, when acts pertaining to European patents or patent applications designating France are recorded in the European Patent Register.22 If so recorded during the opposition period or opposition proceedings for the patents or applications concerned, such acts are thus opposable to third parties – without the need for a “mirror” recording in the National Patent Register.
A specific regime applies where a French patent and a European patent designating France relate to the same invention: so far as the common parts of such patents are concerned, it is not possible to transfer only one of the two patents to a third party, under penalty of nullity.23
Furthermore, for the transfer of the French patent to be opposable to third parties in this scenario, it is not sufficient to record it in the National Patent Register: it must also be recorded in the European Patent Register.24
What sanctions should apply when such acts are not recorded, or are recorded late, has been a long-standing issue. If the assignment of a French patent is recorded long after the fact, and prejudice is suffered in the interim (the so-called “gray period”), can the assignee claim remedies? The Court of Cassation,25 drawing inspiration from the Court of Justice of the European Union (CJEU) (related trademark case law),26 has ruled such a claim admissible. The action can thus be started after the recordal of the transfer with the relevant patent register(s) – and remedies can be sought for all acts committed after the date of transfer. Furthermore, if so provided in the act transferring the patent, remedies for the period before the transfer can also be claimed by the assignee.
Again, a refusal to record by the INPI Director General is subject to appeal before the Paris Court of Appeal. This appeal is not open to third parties, as they retain the option of contesting the opposability of the title and the admissibility of the action before the court hearing the case on the merits.27
Article R. 612-53 of the IPC; the duration of technical preparations is specified in the Guidelines published by INPI.
Paris Court of Appeal, July 1, 2011, RG No. 10/16205.
Court of Cassation, Com., May 30, 2012, Appeal No. 11-21.157 (first decision of the Court of Cassation on this subject). For the same reason, a third-party appeal against a decision to restore the right of priority is not admissible; Paris Court of Appeal, April 9, 2025, RG No. 23/13716.
Court of Cassation, Com., October 17, 1995, Appeal No. 94-10.373; Court of Cassation, Com., July 7, 2004, Appeal No. 02-19.041. Mere differences in wording may be insufficient to prevent the ceasing of effects; see, for example, Paris Court of Appeal, June 30, 2015, RG No. 13/10097.
See, nonetheless, confirmation of the ceasing of effects in cases where the annual fee had not been paid but could still be paid with a surcharge at the end of the opposition period; Court of Cassation, Com., October 18, 2011, Appeal No. 10-24326.
Court of Cassation, Com., April 24, 2024, Appeal No. 22-22.999. The judgment also specifies that the right of action arising prior to the assignment may be transferred to the assignee – which is not surprising by analogy with the possibility of an assignment of claims.
CJEU, February 4, 2016, Case C-163/15.
Court of Cassation, Com., June 17, 2008, Appeal No. 07-11.115, concerning a change of name. For the contested decision concerning registration of a transfer, see Paris Court of Appeal, April 8, 2011, RG No. 10/07576.