Cabinet Beau de Loménie
The rules set forth by the decrees of 2014 and 2015 concerning the implementation of the general principle “silence gives consent”, and its exceptions, have been specified again by decree n° 2015-1436 of November 6, 2015 (published in the Official journal of the French Republic on November 7, 2015).
This decree took effect on November 8 and is also applicable to applications for industrial property titles filed prior to this date which have not been the object of an explicit decision, including SPCs (Supplementary Protection Certificates).
This decree modifies the regulatory part of the Intellectual Property Code while also integrating into the Code the rules contained in the previous decrees on this subject.
The main modifications introduced by this new text are the following:
Patents: it is now clear that any patent application shall be deemed to be accepted within four months from the payment of the issuance fee laid down by article R.612-70, in the absence of an explicit decision by the INPI within this term. However, in the case of an application to modify a claim after partial invalidation of a patent, the modification application is deemed to be refused if the INPI does not render a decision within twelve months from its filing.
SPCs: any application is deemed to be refused if it has not been granted within twelve months from its filing.
Semiconductor Topographies: any application is rejected if it has not been granted within six months from its filing.
Trademarks/designs and models: Any application for registration is rejected if registration has not taken place within six months from its filing. This rule also applies to international registrations, as well as to any national application originating from a request for transformation of a community trademark.
Furthermore, any request for recordal of an entry in the National Register, including a request to record a charge against software exploitation rights, is deemed to be accepted within 6 months from its filing.
Likewise, requests for renunciation or limitation, and requests for restoration of patents and applications are covered by their own special provisions which also provide for implicit acceptance within a specific deadline for each of the rights concerned by these demands.
Finally, in case of a notification of irregularity, issued by the INPI, a deadline is set for the applicant to respond, which cannot be less than one month or more than four months. In the absence of regularisation or observations which could enable the objection to be lifted, the application is deemed to be rejected. If the notification is accompanied by a regularisation proposal, this proposal is deemed to be accepted if the applicant does not challenge it within the fixed deadline.
This notification interrupts – and does not suspend - the deadline set for the INPI to render a decision on the application at issue, until the regularisation of the application or the lifting of the objection. Thus we note that in this case the INPI is not constrained to render a decision by a specific deadline.