French Supreme Court: Reversal in patent divisional applications

With its recent Kubota decision, the French Supreme Court has put an end to the previous legal uncertainty regarding divisional applications. Cascaded divisional applications will now be possible in France. The decision practice on the filing of divisional applications will be harmonised with that of the EPO.

The facts: Kubota v INPI

Specifically, the case concerns the filing of a divisional application from a French patent of Kubota Corporation (Japan). It concerns the second divisional application FR 18 51806 from a patent on lawn mower technology.

- In 2008, Kubota had filed the parent application FR 08 51869 at the French Patent Office (INPI), the basic patent FR 08 51869. It was granted in 2015.
- The first divisional application was filed in time in 2015 and the first divisional patent was granted as FR 15 53600 2018.
- The second divisional application is based on the first divisional application and was filed in 2018, before the first divisional patent was granted.

Article R.612-34 of the French Intellectual Property Code, as amended, provides that "the applicant may file divisional applications on his own initiative on the basis of the first patent application until the grant and printing fees have been paid".

But what is the "first patent application" for a second divisional application?

The INPI had understood this to mean the original parent application and therefore rejected the second divisional application because it had been filed after the parent application had been granted.

Kubota Corporation disagreed. The relevant "first patent application" for the second divisional application was not the parent application, but the first divisional application FR 15 53600.

Kubota appealed to the Paris Court of Appeal, but to no avail (Cour d'appel, 22 November 2019, n°18/27433). The Court of Appeal, like the INPI, held that the original "first patent application" was the parent application for the second divisional application, this being clearly stated in Article R.612-34.
Kubota then appealed to the French Supreme Court.

EPO and INPI - not consistent for years

According to the Guidelines for Examination by the European Patent Office, which entered into force on 1 November 2018 (Part A, Chapter IV, 1.1. 1), it is sufficient that a divisional application is still pending to be able to file another divisional application if the first divisional application is based on it. This is also the decision practice of most patent offices in Europe.

However, in France, this has always been handled differently in recent years. Since 2011, the INPI has required the filing of all further divisional applications until the grant and printing fees of the parent application have been paid in full. Crucial is the expression "first patent application" in Article R. 612-34 of the Intellectual Property Code (French: "demande de brevet initiale"). According to the INPI, this means the first patent application before any division.

Court of Cassation on divisional applications - a reversal

The Court of Cassation (French Supreme Court, Cour de cassation) ruled in its recent Kubota decision n° 20-15.480 that the term "first patent application" refers to the closest application on which a divisional application is based. This was also in line with the EPO's decision-making practice under the 2018 examination guidelines, the Court of Cassation explained.

Court of Cassation puts an end to legal uncertainty

The Court of Cassation expressly emphasised the interest in a convergent interpretation of European and national texts as well as in maintaining the practice of the INPI.

In fact, before 2011, the INPI also accepted the filing of a new divisional application resulting from a first divisional application, as long as the fee for the grant of this first divisional application had not yet been paid. Article R. 612-34, which has now been interpreted by the Court of Cassation, has been unchanged for many years.

The Court of Cassation took all this into account and ruled that for each divisional application, the application on which that divisional application is based is the "initial" one, as the EPO Guidelines provide (Kubota v INPI, decision of the Cour de cassation, 30 August 2023, Pourvoi n° 20-15.480).

Kubota's appeal was allowed and the Court of Appeal's decision of 22 November 2019 was annulled in its entirety.

The French practice for filing divisional applications from patents before the INPI will thus align with the EPO's decision-making practice. Divisional applications filed as a cascade are going to be possible in France.

Any questions on divisional applications or patent application? We would be pleased to provide you with further information on this subject.
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