Kubota case: the French Court of Cassation (Supreme Court) overturns the decision of the Paris Court of Appeal concerning second-generation divisional applications
[07/09/2023]
Kubota Corporation had filed before the French Patent Office (INPI) a divisional application deriving from a patent application still under examination ("parent application"), itself a divisional application of a first patent application ("initial parent application"), which had already been granted at the time of filing of the second divisional application.
Article R.612-34 of the French Intellectual Property Code, in its current version, stipulates that “up to payment of the granting and printing fee, the applicant may, on his own initiative, file divisional applications based on his initial patent application."
Breaking with its usual interpretation of Article R.612-34, and considering that the term "initial patent application" referred to the "initial parent application", the INPI had rejected the second divisional application on the grounds that it had been filed after the grant of said "initial parent application".
Kubota Corporation, considering that the "initial patent application" should be the "parent application" and not the "initial parent application", lodged an appeal before the Paris Court of Appeal, which upheld the INPI's decision.
Kubota Corporation finally won the case before the Court of Cassation, which ruled that the interpretation of the Court of Appeal was not justified and quashed its decision, considering that, on the one hand, the INPI had changed its interpretation over time of an unchanged text of law, and, on the other hand, the interest of a convergent interpretation of European and national texts.
It is thus confirmed that the filing of a second-generation divisional application based on a first-generation divisional application is possible until payment of the granting and printing feed for the first-generation divisional application.
This decision is in line with the practice of most patent offices in Europe, particularly the European Patent Office (EPO), and puts an end to a period of legal uncertainty.
We will be happy to provide any additional information in this regard.