Important clarification from the French Supreme Court on the filing of divisional applications
By a Judgment dated August 30, 2023, the French Supreme Court (“Cour de Cassation”) provided an important clarification regarding the filing of divisional patent applications from French national patent applications.
The Supreme Court considered that a divisional patent application could be filed until the payment of the grant and printing fees of the patent application, from which the divisional patent application directly derives.
This ruling calls into question the practice of the French Patent Office (“INPI”), which considered since 2011 that the filing of a divisional patent application was only possible until payment of the grant and printing fees of the first patent application before any division.
Therefore, in the event of the filing of successive divisional patent applications (for example, filing of a divisional patent application (B) on the basis of a patent application (A), then filing of a divisional patent application (C) on the basis of said divisional patent application (B)), the Judgment of the Supreme Court confirms that it is possible to file the second divisional patent application (C) until payment of the grant and printing fee of its parent application (B), and not until the payment of the grant and printing fees of the first patent application (A), as previously required by the French Patent Office since 2011.
This interpretation of articles L. 612-4 and R. 612-34 of the French IP Code (“Code de la propriété intellectuelle”) is consistent with the practice that was in place at the INPI until 2011 and with the interpretation of the European Patent Convention (EPC) as implemented by the European Patent Office (EPO), leading to a welcome harmonization of practices at the European level.
This Judgment from the Commercial Chamber of the Court of Cassation is published in the official Bulletin and could lead to a modification of the related parts of the Guidelines relating to examination at the French Patent Office.