Within the framework of the integration of the provisions of the PLT and PLT "2" into French law, Ordinance No. 2008-1301 of 11 December 2008 has come to reform the provisions applicable to the procedures for restoration of patents.
Previously, two provisions were applicable: one on the assumption of the non-compliance with a procedural time limit, the other in the case of lack of payment of an annual fee.
Now, only Article L 612-16 of the Intellectual Property Code (IPC) is to be applied, and this whatever the reason having caused the loss of rights.
In addition to the regularization of the non-accomplished act, as well as the payment of restoration fee, the substantive requirements to be met for requesting the reestablishment in its rights of a French patent/patent application are now the following ones:
• the request for restoration shall be submitted within two months as from of the hindrance ceasing to exist (i.e., starting from the day on which the omission is discovered);
• its admissibility shall be limited to one year from the expiry of the unobserved time limit (in terms of annuity payments, this one-year period runs from the expiration of the 6-month grace period);
• it shall be necessary to justify of a legitimate excuse explaining why the error was made.
In the light of the above, we would like to draw your attention to a fundamental change occurred in relation to the non-payment of an annuity.
Indeed, under former Article L 613-22 of the IPC, the request for restoration was to be filed within three months following the reception of the decision of lapse issued by the INPI (the French Patent Office); knowing that the INPI had a backlog in this field, and even omitted to issue such decisions, the patentees could sometimes obtain the restoration of their titles several years after having stopped any payment of renewal fees (and this to the detriment of legal security of third parties).
The application of Article L612-16 of the IPC to annual fees means that, from now on, the time limit for introducing an request for restoration begins to run as from the hindrance ceasing to exist; in practice, as from the discovery of the non-payment of the annuity, or at the very least upon receipt of the decision of lapse issued by the INPI, which undoubtedly shortens the time for lodging a restoration.
We also would like to draw your attention to the fact that, in the event the issuance of a decision of lapse would not be justified (which unfortunately is not an isolated fact), especially when the annuity will have been duly paid, it will be necessary to dispute said decision before the INPI without delay. Indeed, this decision, even unjustified, would become final pursuant to the Ternon Administrative Case Law relating to the withdrawal of rights-generating illegal individual acts (Council of State 26.10.2001), if it is not officially revoked by the administration within four months of its adoption.
In practice, in order to prevent any risk of a possible irrevocability of an unjustified decision of lapse, we advise you to contest, upon receipt, any notification before lapse erroneously issued by the INPI (within the grace period). We systematically implement this safety measure for the cases which we are managing annuities for, and very quickly obtain from the INPI the cancellation of such unjustified notifications.
In the event you would not react further to the receipt of such a notification before lapse, a decision of lapse (also unjustified) would subsequently be issued by the INPI, it would then belong to you to request the cancellation of the same without delay, because for lack of having the same canceled within the four months referred above, the decision of lapse would become final pursuant to the aforementioned case law, without any possibility of legal recourse, and the title of industrial property in question would irremediably fall into the public domain.
Should you need any assistance on the subject, we would be glad to help.