French patents

French patent: patentability search

When an invention is submitted to us, we first start by checking the novelty criterion by means of a patentability search. The aim of this search is to determine precisely the prior art that is closest to the invention. To complete the search, a report is established that contains a list of patents and possible articles published by third parties that raise concerns as to the patentability of the invention, as well as our advice for protection.

The costs of the patentability search are invoiced according to a flat fee agreed in advance, usually CHF 3,000.- + VAT for an invention of average complexity.

Some of the inventions that are submitted to us are abandoned in the light of the patentability search report, when the inventors become aware that the prospects of obtaining protection do not justify the costs or efforts. In this case, the patentability search that was carried out enables the applicant to achieve considerable cost savings by avoiding the filing of a useless application.

Should the procedure on the other hand continue with the drafting of a patent application, the patentability search makes it possible to ascertain which characteristics can be effectively protected and to optimize the drafting of an application to highlight clearly the differences between the new invention and the documents uncovered by the search.

The patentability search report is also accompanied by one or several suggestions as to the strategy for protecting the invention, taking into account the commercial prospects of the invention and the uncovered prior art. A budget is also devised before starting drafting the patent application.

French patent: filing

The text and the drawings of the patent application are then filed with the French Patent Office (INPI) with a corresponding request. The INPI gives the application an application number and a filing date.

From this date onwards, the invention described in the application may be disclosed publicly or commercialised without this publication being opposable to the patent. The applicant can furthermore indicate “patent pending” on the product and associated documentation.

French patent: search report

The patent application is then subjected to a formal examination. Possible objections concerning the form or presentation of the documents of the application can be raised. It is imperative to answer these objections in order for the examination to proceed. The INPI then sends a copy of the application to the European Patent Office, which performs on behalf of the INPI a prior art search and establishes an opinion on the patentability of the application.

The European Patent Office generally strives to prepare this report within a nine months’ deadline after the filing date if the application does not claim any priority; the time required is however often several years if the application is not a first filing for the invention in question.

The search report contains a list of documents uncovered by the search examiner and deemed relevant for assessing the novelty and inventiveness of the invention. The documents are attached to the report. A letter next to each document indicates its relevance. The main codes are “X”, used to designate a document which on its own is considered to call into question the novelty or the inventiveness of a claim of the application, and “Y”, which designates the combinations of documents which, together, allow the inventiveness of a claim to be challenged. The letter “A” designates the documents cited as technological background.

The search report and an opinion on patentability are then transmitted to the INPI and then forwarded to the applicant, who then has a three months’ deadline for answering the objections raised against patentability. If the search report contains only documents marked A by the examiner, it is not compulsory to submit a response to the INPI.

The aim of the search report is merely to establish the patentability of the claimed invention. By no means is it for assessing whether it can be used freely without infringing existing patent rights. An older patent, containing claims sufficiently broad to be infringed by the invention but not describing the new characteristic claimed, will not necessarily be cited despite the applicant obviously having an interest in become aware of this patent. The search report furthermore does not indicate whether the cited patents are still in force.

French patent: publication

French patent applications are published about 18 months after the filing date, or if a priority is claimed, after the date of the oldest priority.

The search report is attached to the publication if it is available (publication A1); in the contrary case, it will be published separately at a later stage (publication marked K).

French patent: grant

Depending on the response to the search report, the INPI examiner decides whether or not to grant a patent. At this stage of the procedure, only applications for which the claimed object is obviously not new can be refused.

The granted patent comprises an appendix indicating whether prior documents identified during the search report are likely or not to affect the patentability of the invention

French patent: renewal fees

The validity of a French patent is 20 years maximum, provided however that annual maintenance fees are paid to the INPI each year.