In brief: patent prosecution in France

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Innovations are patentable provided they satisfy the usual legal requirements (novelty, inventive step, industrial character and sufficiency of description) and they are not specifically excluded by the French Intellectual Property Code.

Accordingly, the following innovations shall not be considered as inventions and are therefore excluded from the scope of patent protection:

• discoveries, scientific theories and mathematical methods;
• aesthetic creations;
• schemes, rules and methods for performing mental acts and playing games;
• business methods; and
• software per se (French case law admits the patentability of software where its implementation produces a technical effect going beyond the simple effect resulting from the physical interactions between hardware and software).

The following inventions are not patentable:

• therapeutic or surgical treatment methods for the human or animal body;
• diagnostic methods applied to the human or animal body;
• inventions whose commercial use would be contrary to public order, human dignity or morality;
• the human body, the discovery of the total or partial sequence of a gene, cloning of human, modification of the genetic identity of humans, use of human embryos for industrial or commercial use and total or partial sequences of genes;
• essentially biological processes and products entirely obtained by essentially biological processes, such as crossing or selection of biological species, including their constitutive elements and the genetic information they contain; and
• plant or animal varieties.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Under French law, the first applicant for a patent is the holder of exclusive rights over such patent.

Therefore, the patentee and the creator of the invention may not necessarily be the same person.

Specific rules govern inventions made by an employee:

• Inventions made in the execution of duties or following the instructions given by the employer automatically belong to the employer, which triggers the right for the employee to get additional pay. In 2015, the law was amended in this regard by providing that the employer shall inform its employee who is the inventor where an application for an industrial property title has been filed in relation to such invention and at the time of grant of such title, where applicable.
• Inventions made outside the employee’s duties, but during the execution of his or her functions, or in the field of the employer’s activity by using technical means and knowledge provided for the company, should belong to the employee. However, the employer may ask to be granted the property or licensed rights in return for a fair price.
• Inventions made by an employee outside the scope of his or her functions and which do not relate to the field of the employer’s activity belong to the employee.

As regards inventions created by independent contractors, the agreement usually provides for an assignment of the invention and patent rights to the client. In the absence of such provisions, the ownership belongs to the first applicant of the patent and the true inventor shall bring a judicial action in order to claim ownership of the patent if need be.

For inventions created within a joint venture, the patent will be owned as follows:

• where the inventor is an employee of the joint venture, the above-mentioned rules on ‘employee’s invention’ apply and the invention may belong to the joint venture;
• where the inventor is one of the members of the joint venture or one of its employees, the ownership will usually depend on the contractual provisions governing such case; and
• if the invention was created by multiple inventors, the rights on the patent may be jointly owned.

In any case, any patent assignment shall be evidenced in writing in order to be valid, and duly registered in the relevant patent registry in order to be enforceable towards third parties.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

The cost to obtain a patent must include the costs related to the drafting and the examination process handled by a patent attorney, the official taxes and the annual fees.

The official taxes to be paid to the French patent office are quite low: €26 for the filing of the application (plus €42 per each claim beyond 10 claims), €520 for the delivery of the search report and €90 for the granting of the patent.

The annual fees progressively increase over the years, from €38 in the second year, reaching €800 in the 20th year.

Fee reductions are allowed in some cases (individuals, non-profit organisations in the field of education or research, small companies).

Same fees apply to utility certificates (with the exception of the search report fee, as search report are not issued for utility certificates).

The filing fee for the supplementary protection certificate (SPC) is €520 and the annual fee is €940.

Patent attorney’s fees are usually in the range of €3,000 to €5,000 depending on the complexity of the invention and its technical field.

The French Patent Office delivers a patent in two-and-a-half to four years following the filing date.

Are there any procedures to expedite patent prosecution?

French patents are generally granted within 30 months. An expedited procedure can be requested by the patent applicant, where some criteria are met (eg, online filing of the patent application, expedited procedure requested within 10 months from date of filing, early publication of the patent application, no third-party observations). In practice, the procedure is rarely used.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

French law gives general principles governing the content of a patent. Accordingly, the patent application shall contain:

• the technical field of the invention;
• the prior art, as known by the applicant, which may be useful to establish the search report;
• claims of the invention to understand the technical problem and its solution;
• a short description of the drawings; and
• the minimum means of carrying out the invention.

In any case, the description must disclose the invention in a manner sufficiently clear and complete for it to be easily carried out by a person skilled in the art.

The French Patent Office does not provide for official guidelines regarding the drafting of the application.

In practice, the subtleties of the drafting of a patent application are related to the nature of the invention (product, processes, etc) or the limits to the patentability of the invention (software, therapeutic methods, gene sequences, etc).

On a separate note, as of 1 July 2020, a provisional patent application can be filed. This is a less expensive procedure, with fewer formalities and fees (ie, the mere description of the invention is sufficient; filing of the claims can be postponed). A provisional patent application shall be, within 12 months from the date of filing, either be completed with the information required for a regular patent application or converted into a utility certificate.

Must an inventor disclose prior art to the patent office examiner?

The applicant is under no obligation to disclose all prior art to the patent office examiner. However, during the course of the examination, the examiner may request the applicant to disclose prior art mentioned in foreign correspondence proceedings.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

The applicant may divide the earlier filed application by filing divisional applications, under the sole requirement that it does not extend beyond the scope of the patent.

Protection of the divisional applications will be granted from the date of the earlier filed application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The Paris Court of Appeal has exclusive jurisdiction concerning adverse decisions of the patent office.

Does the patent office provide any mechanism for opposing the grant of a patent?

As of 1 April 2020, any party can file an opposition to a French patent before the French Intellectual Property Office. This opposition can only be filed against patents, to the exclusion of SPCs or of utility certificates. French Intellectual Property Office’s decisions can be appealed before the Paris Court of Appeal.

The opposition can be filed within nine months from the date of publication of the grant of the patent. The opposition fee is €600.

Apart from the opposition, third parties are allowed to file observations before the French Intellectual Property Office challenging the patentability of the invention. Such observations may influence the examiner and eventually lead to a modification or rejection of the patent claims.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

There is no mechanism for resolving priority disputes between different applicants for the same invention.

The only criterion used to define who has priority is the date when the first application was filed.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

There is no procedure for re-examining or revoking a patent. However, the patent owner may choose to abandon some claims, or limit the scope of the claims of his or her patent under the condition that this limitation does not extend the protection beyond the scope of the application.

How is the duration of patent protection determined?

The French Intellectual Property Code provides for a 20-year period of legal protection for a patent as from its filing date.

Protection of pharmaceutical inventions may be extended by filing an SPC, the duration of which cannot exceed five years from the expiry of the initial patent and 15 years from the issuance of the first marketing authorisation.

The duration of SPCs may finally be extended by six months with the filing of a paediatric extension certificate.

A shorter title, called a ‘utility certificate’, is also provided by the French Intellectual Property Office: its validity has been extended to 10 years from its filing. Conversation of a utility certificate application into patent application is allowed within 18 months from date of filing or of priority and, in any case, prior to the preparation of the application’s publication.

Law stated date

Give the date on which the information above is accurate.

March 2021.