Filing European and foreign patent applications

The filing of a patent at the French National Institute for Industrial Property (INPI) and the protection of industrial and intellectual property are valid only on French territory. Cabinet Le Guen & Associés will assist you with your European and international extension applications before the relevant offices.

Patent applications in foreign countries

Patent applications in foreign countries (European patents, US patents, etc.) are generally subject to a substantive examination undertaken by the relevant offices.

During these examinations, the Examiner has the option to refuse the application for a lack of inventive step, that is to say when the invention is obvious to a person skilled in the art from the prior art. Thus, in these examination procedures, the applicant is required to provide evidence of the inventive step in his or her invention in response to objections raised by the Examiner.

Our overseas colleagues have been partners for decades and defend our clients’ interests before the Examiners.

Extension: Acquiring protection in foreign countries

If extensions to foreign countries (European, US, Canadian, Japanese patents etc.) are envisaged, they absolutely must be filed within a period of 12 months from the filing date. It should be noted that a period of about three months is granted to assess the invention vis-a-vis the documents from the Search Report and to take the decision on extensions in full knowledge of the facts.

We will remind you of the priority periods and will help you to make the best possible decisions in relation to protection in foreign countries and for the purposes of combatting infringement.

How to obtain a European patent

“The procedure is as follows. An application is filed at the European Patent Office (EPO) for a certain number of countries, which have to be designated. The application is the subject of a Search Report, is published, examined, and then granted. Upon the patent being granted, it must be validated in the designated countries in order to confer protection in those countries.

We work together to determine the countries in which the patent must be validated, taking account of numerous factors such as your markets, where your competitors are established and your budget.”

Patent applications in foreign countries (PCT)

The procedure is as follows. A PCT application is filed which designates a certain number of countries (US, JP, AU, etc.) or regions (Europe). The application is the subject of a search report and is published during a phase called the “international phase”.

The application and its search report are filed in the countries initially designated: this is the phase referred to as the national or regional phase. Each application is then the subject of an examination and a grant in accordance with the law in force in the country concerned. For example, for the regional phase in Europe, there is examination, grant and then validation as mentioned above.

The application may be the subject of a preliminary examination, which is carried out in the international phase. By way of this examination, an examiner opines on the novelty of the invention and the inventive step. Then, once this examination has been carried out, the application passes into the national phase as indicated above. The examiners of the national phase are more or less bound by the result of the preliminary examination.