The question of withdrawing or amending a patent application is fundamental for applicants who wish to adapt their protection strategy or correct errors. French law offers several possibilities in this respect, governed by strict rules and precise time limits.
Withdrawal of a patent application
A patent application may be withdrawn at any time, by written declaration, until payment of the grant and printing fee. That option gives the applicant considerable flexibility, allowing it to abandon the application if it considers that the invention no longer has commercial or strategic value.
The declaration may relate to one application only. Withdrawal must therefore be specific to each patent application filed. It is made by the applicant or by a representativewho, unless a conseil en propriété industrielle or an avocat, must attach to the declaration a special power of attorney to withdraw.
Where the patent application has been filed in the name of several persons, it may be withdrawn only if withdrawal is requested by all of them.
Constraints arising from third-party rights
Withdrawal may be restricted by the existence of third-party rights. Where rights in rem, pledges or licences have been recorded in the national patent register, the declaration of withdrawal is admissible only if accompanied by the written consent of the holders of those rights.
From the day on which a person provides evidence of having brought an entitlement action, the applicant may no longer withdraw its application. That protection prevents delaying tactics.
Amending a patent application
In principle, the content of an application is fixed at the filing date and nothing may be added to it thereafter. The purpose of that rule is to protect third parties against any “retroactive” right not provided for at the filing date.
It is nevertheless possible to amend the claims of the patent after filing, provided the amendment is based on the content of the application as filed. Amendments to the patent application must not extend its subject-matter beyond the application as filed.
The claims may be amended during examination of the patent application, but the description may no longer be supplemented. That fundamental rule draws a clear line between what may be amended and what is fixed.
Rectifications d’erreurs matérielles
Until payment of the grant and printing fee, the applicant may request correction of expression or transcription mistakes and of clerical errors identified in the documents filed.
Where the request concerns the description, the claims or the drawings, correction is allowed only if it is self-evident, no other wording or drawing manifestly having been capable of being contemplated by the applicant.
The consequences of withdrawal
In every case of withdrawal of the application, a copy of it is retained by the INPI (the French Industrial Property Office). That retention preserves an administrative record of the withdrawn application.
Where the application is withdrawn after publication in the Official Industrial Property Bulletin of the notice provided for by Article R. 612-39, the withdrawal is recorded of the Office’s own motion in the national patent register.
It may happen (for instance through an INPI error, or a withdrawal after technical preparations have begun) that, despite effective withdrawal of the application, the INPI nonetheless publishes it. In that situation, such publication will probably not qualify as a publication under the third paragraph of Article L. 611-11 of the Intellectual Property Code, since it occurs at a time when the document is no longer a French application.
Alternatives to full withdrawal
For patents already granted, the proprietor may at any time either surrender the patent in whole or as to one or more claims, or limit the scope of the patent by amending one or more claims.
A patent must have been granted before it can be surrendered. Limitation is a procedure allowing the proprietor to limit the scope of its own patent, and the effects of such a decision are retroactive.
Implications pratiques et stratégiques
Withdrawal and amendment of a patent application are essential tools of industrial property strategy. Withdrawal makes it possible to avoid unnecessary costs or to preserve secrecy over an invention, while amendment makes it possible to adapt the scope of protection to the technical and competitive realities discovered in the course of the procedure.
It should be noted that these possibilities are governed by strict time limits and precise formal conditions, often requiring the involvement of a patent attorney in order to optimise filing strategy and avoid procedural pitfalls.