1 December 2010Patents

France catches up

The new law entered into force on January 1, 2009 and constitutes an innovation that offers new perspectives in infringement and revocation litigation.

The situation prior to the new law

Before the new law introduced the limitation procedure, it was practically impossible for a patentee to amend its patent other than by abandoning certain claims so as to maintain only subsidiary claims.

It was therefore impossible to introduce features into the claims solely from the patent description.

It should nevertheless be noted that in one case, Seb v. Moulinex (1994), the Supreme Court allowed the claims of a patent to be amended by the French Intellectual Property Office (INPI), but with the sole aim of making the claims consistent with the invention described in the patent.

This decision has been little followed by the French courts and, in our view, it led to legal uncertainty, since it was unclear in what cases it would be possible to amend the claims so that they conformed with the described invention.

The new provisions

The new French provisions enable this uncertainty to be removed.

It is now possible to limit a French patent using the features found in the description or in the claims.

These provisions are given in articles L.613- 24, L.613-25, L.614-12 and R.613-45 of the Intellectual Property Code (IPC).

Article L.613-24 provides that the patentee may, at any time, limit the scope of its patent by amending one or more claims.

As specified by article L.613-25, this may be carried out during infringement or revocation proceedings.

The request for limitation must be presented before INPI, which examines the request to see if it conforms with certain regulatory provisions (article R.613-45).

Article L.613-24 further specifies that the effects of the limitation are retroactive to the date of filing of the patent application.

The new French provisions do not explicitly state whether the French part of a European patent may be limited in proceedings before INPI.

However, it would appear from recent practice at INPI that patents of European origin may be limited before INPI.

The conditions for limitation

Article R.613-45 IPC gives the conditions for admissibility of a limitation. In addition to the formal aspects, such as the payment of a fee, article R.613-45 provides that the request for limitation may be rejected if:

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