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Conditions to obtain reinstatement in case of non payment of an annuity

APPLICABLE LAW

Article L.612-16 of the French IP Code such as modified by Ordnance No.2008-1301 of Dec. 11, 2008 art. 1, states:

Where an applicant has not complied with a time limit as regards the National Institute of Industrial Property, he may submit an request for reinstatement of his rights if he is able to give a legitimate reason and if the direct consequence of the hindrance has been refusal of his patent application or the loss of any other right or means of appeal.

The request must be submitted to the Director of the National Institute of Industrial Property within two months of the hindrance ceasing to exist. The act that has not been carried out must be accomplished within that period. The appeal shall only be admissible within a period of one year from expiry of the time limit not complied with

 

WHAT ARE THE SALIENT POINTS HERE

This article defines the conditions which a patentee has to satisfy to obtain the reinstatement of his rights:

A. The request must be filed within two months from the date of the hindrance ceasing to exist;

B. The request must be filed within 1 year from expiry of the non-observed deadline for payment;

C. The patentee must show he did not voluntarily let the patent lapse and this is the result of a situation he had no control over;

D. The lapse of the patent cannot be considered as being the result of a fault or negligence on the part of the patentee.

 

COMMENTARY:

ITEM A

Regarding the first condition the request must be filed within two months from the hindrance ceasing to exist:

Since the Law does not specify what is meant by “when the hindrance ceased to exist”, this date depends on its interpretation by the Courts.

Recently this was defined by the Appeal Court of Paris in 3 decisions adopted on the 15th of January 2014 (Actavis vs AstraZeneca), overruled in April 2017 by the Appeal Court of Paris.

In January 2015 the Court of Appeal had considered:

  • the aim of publication in the Official Bulletin of the Patent Office (BOPI) of decisions of invalidity for non-payment of an annual fee is to inform third parties, and also the holder of the patent itself, of the observed failure and its consequences;
  • in the present case the decision of invalidity of the patent for non-payment of an annuity was published in the BOPI of 23th of April, 2014;
  • the aim of the deadline of two months foreseen by the French IP Code is to guarantee legal security and protection for third parties and to allow them to determine without risk the date a patent has lapsed.

The consequence of this decision was that it is the date of publication in the BOPI of the decision that the patent had lapsed for non-payment of an annuity that set the starting date for the period during which a request for reinstatement can be filed, i.e. two months after the publication of the invalidity of the patent in the Official Bulletin.

However the Paris Appeal Court (Pole 5, 1st Chamber, – RG 2016: 11489) more recently on April 25th, 2017 considered that the date to be considered is the date on which the owner of the Patent became aware of the invalid character of his patent/patent application. This is a good decision for foreign applicants since they certainly are not avid readers of the Official Bulletin (BOPI) published by the French Patent Office.

 

ITEM B

Regarding the second condition, i.e. the request must be filed within 1 year from expiry of the non-observed deadline:

This means that to take the example of a patent filed on March 12th, 2016, since the annuities have to be paid before March 31, 2016 or with a late payment fee until September 30th,2016, the extreme limit to validly launch a request for reinstatement, according to this item B, would be, November 30th, 2017.

 

ITEM C

It is required to demonstrate that the patentee intended to maintain the patent in force (thus that he did not voluntarily abandon the patent) and that the non-payment of the annuity due is the result of a situation he had no control over.

 

ITEM D

It is required to demonstrate that the lapse of the patent cannot be considered as being the result of a fault or negligence on the part of the patentee.