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01-06-2015 » "The silence of the Administration amounts to rejection": follow-up ...and final instalment?

Decree N° 2015-511 of May 7, 2015 - published in the Journal Officiel de la République Française (The Official Journal of the French Republic or JORF) and effective as of May 9, 2015- modified decree N° 2014-1280 of October 23, 2014 relating to exceptions to the application of the principle “silence amounts to acceptance” that had previously been adopted on the basis of article 21, section II of law N°2000 relating to the rights of citizens in their exchanges with the Administration (public services). 

This decree n° 2014-1280 of October 23, 2014 had specified those cases in which the silence of the Administration amounted to a refusal, depending on the subject of the application and the time period in which the refusal was granted. For example, a patent application was deemed to be refused by the INPI in the face of silence of the administration four months after filing the application; whereas, for filing or renewing a trademark or a design, the relevant time period was six months. This same time-frame applied to oppositions. Time periods concerning other kinds of requests were also specified.

These various time periods were indexed in a table annexed to the original decree. 

Upon reading the decree of May 7, 2015, the only requests covered by the annexed table are now the following: 

Request type

Dispositions enforceable as of November 12 2014

Time period after which the (rejection*) decision is deemed to have taken place (when different from 2-months)

Accreditation of industrial and artisanal geographical indications

Art. L.721-2 to L.721-10

2 months with the possibility of an additional one-month extension

 

Regulation (EC) N°1610/96 of the European Parliament and of the Council of July 23, 1996 on the creation of a complementary protection certificate for phytopharmaceutical products and regulation (EC) N° 469/2009 of the European Parliament and of the Council of May 6, 2009 on the complementary protection certificate of medication

Complementary protection certificate

Articles 2 and 3

1 year

A decision on the grant of a French patent cannot now, under any circumstances, be the object of an implicit refusal and the previously observed 4-month time period is no longer applicable. The same holds true, mutatis mutandis, for opposition decisions against a trademark filing. 

The exceptions that had existed to the principle “Silence amounts to approval” have not disappeared altogether and it is appropriate to report on other provisions of decree N° 2015-511 of May 7, 2015.

The following procedures are still subject to an implicit refusal decision by the INPI:

  1. 1.    Registration and extension (renewal) of a design

1.1  The INPI has 6 months to rule on a registration request (acceptance or refusal). After the 6-month period has elapsed, the silence of the administration amounts to an implicit refusal decision. However, this time period may be interrupted in case of issuance of an official notification, such as those cited in the first and third paragraphs of article R. 512-9 (the interruption lasting  until the objection is lifted) or, in cases of deferred publication as stated on article R. 512-10, until the deferral is waived.

1.2  The INPI has 6 months to rule on the declaration of renewal of a design. This time period may be interrupted by an objection as cited in article R 512-9 (the interruption lasting until said objection is withdrawn). At the end of this 6-month period, the silence of the administration equals an implicit refusal decision on the renewal declaration.

  1. 2.    Request for renunciation, for limitation or for forfeiture of a patent.

2.1  The INPI rules on a request for renunciation or limitation of a patent within 12 months of the request being filed. After 12 months, the silence of the administration amounts to an implicit refusal of the request. This period is interrupted in case of an objection, such as that cited in article R 613-45 (second to last paragraph), until the objection is lifted.

2.2   The INPI rules within six months on a request – from the patentee or from a third-party - for forfeiture of a patent. At the end of this 6-month period, the silence of the administration amounts to an implicit refusal of the forfeiture of the patent. 

  1. 3.    Registration and renewal of a trademark

3.1  The INPI has 6 months to rule on an application for registration of a trademark (acceptance or rejection). After 6 months, the silence of the administration amounts to an implicit refusal decision. This time period is interrupted, when appropriate, until the ruling on an opposition request, as stated in article L. 712-4, or until the regularization of the application, as stated in article R. 712-11.

3.2   In addition, the INPI has 6 months to rule on the declaration of renewal. This time period is interrupted, when appropriate, until the regularization of the request, as stated in article R. 712-11. After the 6-month period has elapsed, the silence of the administration amounts to an implicit refusal decision on the declaration of renewal.

Considering the effective date of this new decree, the 6-month time period will expire on November 9, 2015 for requests that are currently in-progress.

It must be noted however, that this decree states in its introduction that it will apply to past requests that have not been subject to explicit decisions. Thus, it is appropriate to review all requests that have not been the subject of a decision by the Administration prior to the publication of this decree, including those prior even to the first decree. As of November 10, 2015, these requests will be considered rejected and the owners of the rights will have one month to appeal.

Regarding trademarks, one issue remains open. Where the regularization proposed by the Administration is not accepted or where observations to appeal a notification issued by the INPI are filed, should we consider that the 6-month period is suspended or should we consider that, if the Office does not indicate its position in the 6 months following the filing, the observations issued, as well as the request, are rejected? This is not yet settled.

IN BRIEF:

Increasing of French official fees is planned by the French National Institute of Industrial Property in 2015 without any specific date up to now.

Decree N° 2015-427 of April 15, 2015 relative to the detention in customs of merchandise that is presumed to be counterfeit appeared in the JORF on April 17, 2015. Based on article 7 of the so-called “Counterfeit” law  of March 17, 2014, which extended this procedure to patents, geographical indications and plant varieties, the Decree details terms for implementing the “customs detention” . Application of the Decree is suspended until a governmental order will render it operational. 

The Court of Justice of the European Union rejected two appeals from Spain asking for the cancelation of: regulations on the creation of unitary patent protection (C-146/13), and the regulations relating to translation (C-147/13). In addition, in May a preparatory committee for the Unified Patent Court published a project regarding official fees, which is submitted for consultation until July 31, 2015. 

The European Commission, the European Parliament and the Council have temporarily agreed on the European reform to the trademark package and to a project for future OHIM official fees. The cost of filing will remain €850 and filings may only be for one class, instead of 3. 

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