On March 21, 2018, the Japanese company Kubota filed an initial patent application registered under No. 08 51869, entitled “Lawnmower comprising a grass collector pivoting by means of a jack”.

On April 22, 2015, Kubota filed a first divisional application No. 15 53600 before paying the issuance and printing fee for the initial patent specification No. 08 51869 on April 24, 2015.

On March 1, 2018, Kubota filed a second divisional application No. 18 51806.

The payment of the issuance and printing fee for the publication of the specification of the first divisional patent application occurred on March 7, 2018.

In a decision dated August 27, 2018, the Director General of the French National Institute of Industrial Property (hereinafter INPI) declared the second divisional application inadmissible on the grounds that it was filed after the payment date of the issuance and printing fee for the initial patent application. Indeed, according to Article R. 612-34 of the French Intellectual Property Code, it was no longer possible to file a divisional patent application of the initial application on that date.

This article states that “Until the payment of the issuance and printing fee for the patent specification, the applicant may, on his own volution, file divisional applications for his initial patent application”.

Kubota appealed against this decision.

Considering that the term “patent” in the aforementioned Article R.612-34 could be understood as referring to the first divisional application, i.e. the parent application of the second divisional application, Kubota argued before the Court of Appeal that the second divisional application had indeed been filed within the time limit set by the texts, since it had been filed before payment of the fee for issuing and printing the specification of the first divisional patent application from which it was derived.

To underpin its line of reasoning, Kubota relied on other provisions of the French Intellectual Property Code, which use the term “patent” and which, in the context of a divisional application, means “parent application” or “grandparent application”. Kubota also relied on the EPO practice.

The Director of the INPI maintained that the term “patent” in Article R. 612-34 referred to the initial patent, before filing any divisional patent application.

In its decision of November 22, 2019 (RG 18/27433), the Court dismissed the appeal filed by Kubota against the decision of the Director of the INPI on the grounds that the term “patent” used in the aforementioned Article R. 612-34 “refers to the expression ‘initial patent application’ contained in the same sentence”, and “designates the first patent application before any division, thereby establishing a filing date applicable to all subsequent divisional applications, without leaving room for any other interpretation of this text, notwithstanding a previous practice of the INPI abandoned since 2011”.

Kubota appealed against the Court of Appeal’s decision.

In view of the practical implications of this case for French Patent and Trademark Attorneys, the National Company of Industrial Property Consultants (hereinafter CNCPI) intervened voluntarily in the cassation proceedings. However, the French Supreme Court ruled that this voluntary intervention ancillary was inadmissible, as CNCPI failed to demonstrate a legitimate interest.

In its decision of August 30, 2023, the French Supreme Court held “that the practice concerning the examination of divisional applications by the European Patent Office, as set out in the guidelines for examination by that Office, in their version in force since November 1, 2018 (Part A, Chapter IV, 1.1.1), that, for the application of Articles 76 of the Munich Convention on the Grant of European Patents of October 5, 1973 and 36 of the Implementing Regulations of this Convention, the expression ‘earlier application’ refers to the closest application on which the divisional application is based, that expression having replaced ”initial application” in Article 76 mentioned above, prior to its revision by an act of November 29, 2000.”

The Court also held, “as the contested judgement pointed out, until 2011” that “the INPI accepted the filing of a new divisional application until the date of payment of the issuance and printing fee for the patent specification resulting from a first divisional application”.

This interpretation is in line with “the interest in a convergent interpretation of European and national texts, pursuing the same goal of protecting innovations, as well as the maintenance, for the safety of inventors, of a practice of the INPI based on texts that have not been amended by the legislator”.

The French Supreme Court therefore quashed the appeal judgment and referred the parties to the Paris Court of Appeal with a different composition.

From a practical point of view: this decision confirms that the deadline for filing a second divisional application from a first divisional application is the date of payment of the issuance and printing fee for the specification of the patent resulting from that first divisional application.

From a legal point of view: this decision reminds that European and national texts which pursue the same goal of protecting innovations must be interpreted convergently.