Are new requests for amendment of the claims admissible before the Court of Appeal?
On 4 July 2025, the Paris Court of Appeal ruled on an appeal against a decision rendered by the French National Institute of Industrial Property (INPI) in patent opposition proceedings concerning a French patent. The decision of the Court of Appeal confirms the strict application of admissibility rules, both during opposition proceedings before the INPI and on appeal, with regard to requests, arguments and documents submitted during the proceedings.
Following an initial part devoted to the lessons drawn from the Court of Appeal’s ruling on opposition proceedings before the INPI, published in our article “Patents: lessons from an appeal on opposition (part 1/2)”, this second part is dedicated to the appeal before the Court of Appeal.
1. Linxens’ appeal before the Court of Appeal
By way of reminder, Linxens had obtained a patent relating to a smart card, which Thales challenged by filing an opposition before the INPI. At the end of this procedure, the INPI fully revoked the patent. Linxens then lodged an appeal before the Paris Court of Appeal, which upheld the revocation.
Before the Court of Appeal, Linxens submitted two new requests for amendment concerning the content of the claims. These requests had never been presented during the opposition proceedings before the INPI.
Thales challenged the admissibility of these requests, characterising them as new claims.
Linxens relied on the following arguments:
- The appeal against a decision of the INPI in opposition proceedings is an appeal on the merits and constitutes a continuation of the opposition proceedings; consequently, auxiliary requests, which are admissible in opposition proceedings, must also be admissible on appeal;
- These requests must not be regarded as new requests (new claims); indeed, they pursue the same objective as those submitted to the Director General of the INPI; that objective is the maintenance of patent FR 381 in amended form;
- These requests were submitted in response to the opposing party’s arguments.
We will analyse in detail two lessons that can be drawn from the decision of the Court of Appeal. But first, let us recall what the parties may invoke on appeal.
2. What the parties may invoke on appeal
Pursuant to Article R.411-38 of the French Intellectual Property Code (IPC), before the Court of Appeal hearing an appeal against a decision of the INPI in opposition proceedings, the parties may raise new arguments, submit new documents or propose new evidence.
Furthermore, the parties may not submit new claims, failing which they will be declared inadmissible ex officio, except for the purpose of having the court rule on issues arising from the intervention of a third party or from the occurrence or disclosure of a fact.
3. The decision of the Court of Appeal
Can the same provisions be applied to appeals before the Court of Appeal as to opposition proceedings?
In response to Linxens’ first argument, the Court of Appeal notes that Article L.613-23-3 of the IPC, relating to opposition proceedings, applies solely to opposition proceedings before the INPI. This procedure is governed by Articles R.613-44 to R.613-44-12 of the IPC.
Article L.613-23-3 of the IPC is not applicable to appeals before the Court of Appeal.
Indeed, such appeals are governed by Section 3 of Chapter 1 of Title I of Book IV of the regulatory part of the IPC, entitled “Appeals brought before the Court of Appeal against decisions of the Director General of the INPI” (Articles R.411-19 to R.411-43 of the IPC).
The fact that the appeal is characterised as an appeal on the merits does not allow the provisions governing opposition proceedings before the INPI to be applied. Consequently, the argument put forward by Linxens is rejected.
New requests for amendment of the claims held inadmissible
In response to the last two arguments raised by Linxens, the Court of Appeal examined the issue from the following three angles.
1. Can the new requests be characterised as new arguments?
On the basis of Article R.411-38 of the IPC, the Court of Appeal held that new requests submitted for the first time at the appeal stage and seeking to amend the patent cannot be regarded as new arguments, since they aim to amend the claims of the patent.
2. Do the new requests constitute new claims?
Still on the basis of Article R.411-38 of the IPC, the Court held that requests seeking to amend the claims constitute new claims. The Court specified that these requests do not pursue the same objectives as the requests submitted during the opposition proceedings before the INPI, as they do not seek to obtain the same scope of protection.
As a matter of principle, claims are considered to be new where they do not pursue the same purpose as those submitted to the Director General of the INPI.
The Court clarifies the notion of “same purpose”: contrary to what Linxens argued, maintaining the patent in amended form is not in itself considered an objective. The relevant objective lies in the scope of protection: if each amendment request corresponds to a distinct scope of protection, it cannot be considered as pursuing the same purpose.
Consequently, the new amendment requests cannot be regarded as pursuing the same purpose as those presented during the opposition proceedings.
Confirmation of the Tinnus v. Koopman decision
The Linxens v. Thales decision may be regarded as confirming the position adopted on a similar issue in the decision of 9 April 2025 (Tinnus v. Koopman). In that case, one of the issues concerned the possibility for the proprietor to file new auxiliary requests for amendment of the patent at the appeal stage. On the basis of Articles R.411-19, paragraph 2, and R.411-38 of the IPC, the Court held that the proprietor may not submit new requests on appeal, since their objective does not correspond to that of the patent as granted nor to the amendments proposed before the INPI. Each request corresponds to a different set of claims, with a distinct scope of protection, which confirms that they do not pursue the same purpose, in line with the reasoning developed in the Linxens v. Thales decision.
Once this point has been clarified, the next question concerns whether the new requests could constitute a response to the cases provided for in Article R.411-38, paragraph 2, namely “having the court rule on issues arising from the intervention of a third party or from the occurrence or disclosure of a fact”.
3. Do the new requests seek to address a new fact?
The Court added that Linxens cannot validly claim that these new requests seek to have the court rule on issues arising from the occurrence or disclosure of a fact. Indeed, the objection based on extension of the subject-matter beyond the content of the patent application as filed had already been raised during the proceedings before the INPI. Moreover, the Director General of the INPI had examined this issue, finding the existence of an impermissible intermediate generalisation, which had already been the subject of debate.
Consequently, these new requests cannot be regarded as seeking to address a new fact.
As explained in the previous section, the Linxens v. Thales decision may also be viewed as confirming the position adopted in the decision of 9 April 2025 (Tinnus v. Koopman). In the latter decision, the Court held that, since the opponent relied on appeal on the same grounds of opposition and the same documents as during the proceedings before the INPI, the proprietor’s new claims did not respond to a new argument raised by the opposing party and were therefore inadmissible.
4. Further discussion
Can new documents filed by the opponent before the Court of Appeal be regarded as new facts?
In the Linxens v. Thales decision, as well as in the decision of 9 April 2025 (Tinnus v. Koopman), the Court clearly established that, in the absence of a new argument, a new document or a new fact, a new request for amendment of the claims is inadmissible. In both cases, the opponent had not submitted any new prior art document at the appeal stage.
This raises the following question: if a new prior art document is submitted on appeal, and if a new request for amendment of the claims is submitted in response, would it be considered a response to a new fact and, as such, admissible?
According to a decision of the Paris Court of Appeal dated 26 September 2025 (Oceane Profils v. Arcal), such acceptance is not guaranteed, as it is debatable whether such “new” prior art documents could not have been known earlier.
The Oceane Profils v. Arcal case
In this case, the opponent, the company Océane Profils, submitted in the context of the appeal before the Court of Appeal thirteen new documents that had not been filed before the INPI, and the patent proprietor, the company Arcal, submitted new requests before the Court which had not been submitted to the opposition division of the INPI.
The Court of Appeal held the new auxiliary requests to be inadmissible. It considered that the new documents relied upon for the first time on appeal did not constitute new facts. The Court specified that these new opposed documents predated the patent application and could have been taken into account at the time of drafting the patent.
One may wonder whether this line of reasoning would withstand review by the Court of Cassation, in particular in the context of the objective of convergence of interpretations between the EPO and the INPI.
Rules of admissibility before the EPO vs before the INPI
As regards the admissibility of new arguments or new documents submitted by the opposing party on appeal before the Boards of Appeal of the EPO, Rule 12(4) RPBA requires that the filing of new prior art documents be justified, while Rule 12(6) RPBA in principle prohibits holding back documents for the purpose of submitting them only at the appeal stage.
Moreover, if such new documents are admitted, the proprietor may submit new arguments and/or new auxiliary requests in order to ensure compliance with their right to be heard (Article 113(1) EPC).
By contrast, in France, as indicated above, Article R.411-38 of the IPC expressly provides that, during appeal proceedings, the parties may submit new arguments, file new documents or provide new evidence. The admissibility of such documents is thus, in theory, less restrictive than before the EPO.
Thus, before the Paris Court of Appeal, the proprietor cannot oppose the submission of new prior art documents. However, in the example of the decision of 26 September 2025 (Oceane Profils v. Arcal), the proprietor cannot submit new auxiliary requests in response to the new opposed documents and may only put forward new arguments, contrary to the practice before the EPO.
Conclusion: is the proprietor at a disadvantage before the Paris Court of Appeal?
In several decisions (Linxens v. Thales, Tinnus v. Koopman and Oceane Profils v. Arcal), the Paris Court of Appeal has confirmed that a new request for amendment of the claims at the appeal stage constitutes a new claim. Such a new claim is inadmissible, unless it seeks to respond to a new fact.
Furthermore, in the Oceane Profils v. Arcal decision, the Court confirmed that the submission of new prior art documents by the opponent is admissible and does not constitute a new fact.
If this principle were to be confirmed, the proprietor would find itself in a delicate situation before the Paris Court of Appeal: it would neither be able to oppose the submission of new documents by the opposing party, nor submit new auxiliary requests in response.
In this context, the proprietor risks seeing its ability to protect its patent (severely) limited. If the opposing party acts strategically and waits until the appeal stage to submit new documents, the proprietor finds itself almost unable to react by amending its claims.
By Manqi ZHU, 24 March 2026
Image credit: Malik, Pexels