Supreme Court shows INPI the way to harmonisation with EPO regulation

The French Supreme Court ruling is based on a dispute between Japanese agricultural and construction machinery manufacturer Kubota and the INPI, concerning the application of the former’s French divisional patent FR 18 51806.

The INPI rejected the application on the grounds that the filing date was too late, meaning the current dispute focuses on the date on which a party must file a divisional patent.

In 2008, the INPI granted Kubota basic patent FR 08 51869, which protects lawnmower technology. In 2015, the first divisional patent FR 15 53600 followed, which now forms the basis for the second divisional application, FR 18 51806.

INPI says no grant

However, the INPI rejected the latter. In the office’s view, Kubota should have filed this second divisional application before the granting of the original patent and payment of the corresponding fee.

Kubota then appealed to the Paris Court of Appeal (case ID: Q 20-15.480). The Japanese company argued that, since the second divisional application is based on the first divisional patent and not on the original patent, the filing was made in due time – namely, before the granting of the first divisional patent and payment of the fee.

However, the court followed INPI’s view that Kubota should have filed this second divisional application before the granting and fee-payment of the original patent. Thus, in 2019, the court dismissed the appeal in 2019 (case ID: 18/27433). Kubota then appealed to the French Supreme Court.

INPI and EPO diverge

Since 2011, the INPI has allowed the filing of a second divisional application only until payment of the grant fee relating to the original patent. Thus, for years, the practice of the INPI has differed from that of the European Patent Office.

According to EPO guidelines, it is sufficient that a divisional patent application is still pending in order for parties to file a further divisional application on which it is based.

CNCPI acts as intervener

Guylène Kiesel Le Cosquer

The French Supreme Court has now ruled that, in the interest of a harmonised interpretation of European and national regulations, the time limit for a divisional patent application should be based on the divisional patent from which it derives and not on the grant date of the basic patent.

JUVE Patent is unaware whether Kubota will now again appeal to the Court of Appeal.

Regardless, the ruling is significant for the French patent community, since it addresses for the first time the disparity between INPI and EPO practices.

As a result, France’s National Council of IP Attorneys (CNCPI) decided to participate in the Supreme Court proceedings as an intervening party.

Client moves too

For years, Kubota has relied on French patent attorney firm Beau de Lomenie for patent filing and prosecution. Patent attorney and partner Didier Intes and IP lawyer Gaston Vedel called in Sandrine Bouvier-Ravon for the proceedings before the Court of Appeal.

Sandrine Bouvier-Ravon

Patent litigator Bouvier-Ravon was a long-time partner at IP boutique Cousin & Associés until the end of 2022. She brought the client to Plasseraud when she joined the firm in early 2023.

The patent attorney firm thus relies on a mixed approach with patent litigators and patent attorneys working together on disputes.

Martin Le Guerer, who is admitted as a lawyer to the French Supreme Court, supported the team. Law firm Munier-Apaire represented the CNCPI.

For Kubota
Plasseraud (Paris): Sandrine Bouvier-Ravon (partner)
Beau de Loménie (Paris): Didier Intes (partner, patent attorney), Gaston Vedel
SCP Thomas-Raquin Le Guerer, Bouniol-Brochier (Paris): Martin Le Guerer (lawyer admitted to the French Supreme Court)

For CNCPI
Cabinet Munier-Apaire (Paris): unknown

For INPI
In-house (Paris): Caroline Le Peltier (public knowledge)

Supreme Court Paris, Chamber of commerce, finance and economy
Christophe Soulard (presiding judge), Vincent Vigneau, Carole Champalaune, Sophie Darbois, Sylvaine Poillot-Peruzzetto, Valérie Michel-Amsellem, Melanie Bessaud, Clotilde Bellino, Nicolas Regis, Laure Comte, Anne-Sophie Texier