The main differences between a French Patent and a French Certificate of Utility are :
Duration
Patent : 20 years from the filing date.
Certificate of utility : 6 years from the filing date
Examination
Patent : A preliminary search report is done by the European Patent Office for the French Office, usually 9 months after the filing or priority date. The applicant may or has to (in case of documents cited in category X or Y) modify the claims as filed.
The official fee for requesting the preliminary search report is of 500 EUR (375 EUR for a small entity).
Certificate of utility : No search report is done.
The patentability conditions are the same : novelty; inventive step; industrial applicability.
Duration of the prosecution till grant
A Patent application (like a Certificate of Utility) is published 18 months after the filing date or the priority date, if any. Generally the grant of patent takes place 2 to 3 years after the filing and the grant of a certificate of utility takes place 2 years after the filing.
Conversion
. The conversion of a certificate of utility application into a patent application is impossible.
. The conversion of a patent application into a certificate of utility is done ex officio if the petition for the preliminary search report is not filed within a 18-month period from the priority date or from the filing date if no priority is claimed, unless the applicable fee and a fine are paid within 2 months from the notification of transformation of the patent into a certificate of utility.
This is why we advise to file a patent application without requesting the establishment of a preliminary search report in order to postpone the decision as to the possible duration (20 years or 6 years). We send reminders generally two months before the due date. However, if the French patent application is filed under foreign priority, you have in fact only six months to decide between patent and certificate of utility.
What happens in case of an action for infringement ?
Certificate of utility : The plaintiff shall request the establishment of the preliminary search report. However, the proceeding does not permit to modify the claims in order to take into account the prior arts.
This is an important inconvenience. This is why filing a patent application seems always a better way to obtain rights on an invention.
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