Industrial Property Law

The proprietor of a forfeited title may appeal to the director general of INPI to have his rights restored if he can justify a legitimate excuse and if failure to comply with the deadline for payment of the annual fee has as its direct consequence the forfeiture of the title (Article L. 612-16 IP Code) . A legitimate excuse is provided if the proprietor has given formal instructions to his agents  …

Application for restoration

The proprietor of a forfeited title may appeal to the director general of INPI to have his rights restored if he can justify a legitimate excuse and if failure to comply with the deadline for payment of the annual fee has as its direct consequence the forfeiture of the title (Article L. 612-16 IP Code) . A legitimate excuse is provided if the proprietor has given formal instructions to his agents for the regular payment of annuities, and these agents are qualified specialists , or if the culpable behavior of a third party is the cause of the insufficiency of funds which has resulted in the non-payment, even if this fault was committed well before the expiry of the grace period . On the other hand, there is no legitimate excuse if the patent owner has decided to manage his or her patent portfolio personally, entrusting the monitoring of payments to a computer, and limiting the task of the consultancy firm strictly to the filing of the patent, without giving any further instructions to the agent .

An application for restoration must be submitted in writing to the director general of the INPI by the patent applicant who must be the person entered in the national patent register if the application is published, or by a representative (Article R. 613-52 IP Code). The application must be lodged within two months from the end of the impediment constituting the legitimate excuse . In addition, the action is admissible only within one year of the expiry of the missed period (Article L. 612-16, para. 2, IP Code). In the case of non-payment of a maintenance fee, the missed period corresponds to the grace period stipulated in the second paragraph of Article L. 612-19 of the Intellectual Property Code. Restoration is granted by the INPI director general only on condition that the maintenance fees due on the day of restoration have been paid within three months from the registration of the restoration judgment in the national patent register (Art. L. 612-16, para. 3 and R. 613-50, para. 3, IP Code).

The director general must rule on the restoration application within six months from the date it was made (Art. R. 613-52-1 IP Code). In the absence of an express judgment within this time-limit, the application is deemed to have been granted (Art. R. 613-52-2 IP Code). Should the application fail to meet the requirements, the INPI notifies the applicant, giving reasons and a deadline for rectifying or contesting the objections. This notification interrupts, where applicable, the INPI's time-limit for taking a decision, until the application has been put in order or the objection has been withdrawn (Article R. 613-52-1 IP Code). It may be accompanied by a proposal for regularization, which is deemed to have been accepted unless contested by the applicant. In the absence of any regularization or observation enabling the objection to be lifted, the director general of the INPI rejects the application, setting out the reasons for the decision, and notifies the applicant of the decision (Art. R. 613-52 IP Code).

The INPI director general's judgment on an application for restoration is entered in the national patent register and mentioned in the official bulletin (BOPI) . An action for annulment may be lodged with the Court of Appeal within a month of its publication in the BOPI (Article R. 411-19 et seq. IP Code) .

Restoration restores the applicant's rights retroactively.

Originally, the restoration procedure was exclusively a judicial matter, introduced by Article 48, paragraph 3, of the Law of 2 January 1968.

Cass. com. 16 February 1972, LawLex202200002901JBJ.

Cass. com. 20 July 1981, LawLex202200003139JBJ, which considers as a legitimate the faults committed by the undertaking responsible for providing the proprietor with the funds intended for the maintenance of his patents.

Cass. com. 25 February 1974, LawLex202200003140JBJ.

CA Paris, 15 January 2014,  LawLex202300000350JBJ, under the procedure prior to Ordinance No 2008-1301 of 11 December 2008, the time-limit was three months from regular notification of the forfeiture of title (former Article  L. 613-22, 2° IP Code): Cass. com., 12 April  2016, LawLex202300000086JBJ.

Cass. com., 19 February 1991, LawLex202200003141JBJ.

Cass. com. 19 February 1991, LawLex202200003141JBJ, which specifies that only the entry in the BOPI starts the time-limit for filing an action, to the exclusion of the date of registration of the action for restoration in the national patent register or the date on which the applicant became aware of it.

Industrial Property Law

348. Application for restoration

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348. Application for restoration

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise