French Patent or a French Certificate of Utility: Cabinet Chaillot - French and European attorneys for patents, trademarks and designs

Filing a French patent or a French certificate of utility?

The main differences between a French Patent and a French Certificate of Utility are :

Term

Patent : 20 years from the filing date.

Certificate of utility : 10 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 when no priority is claimed). The applicant may or has to (in case of documents cited in category X or Y) amend the claims as filed or file observations in response to the search report.

The official fee for requesting the preliminary search report is of 520 EUR (260 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.

It is possible to accelerate the granting of a certificate of utility by requesting earlier publication.

Conversion

The conversion of a certificate of utility application into a patent application is possible within 18 months from the earliest filing date of the certificate of utility application.

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 amend 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.

Applicant(s)

For a natural person: Name, first names, nationality and address.
For a legal entity: Legal name, legal form and address (if the applicant is a foreign company, we shall indicate : company incorporated according to the laws of ...).

Since 01/09/2005, a reduction of fee is applicable for "small entities". A natural person is a small entity.
For a legal entity, a declaration must be filed within one month from the filing date. The condition for beeing a small entity are:

be a small or medium-sized enterprise with less than 1000 salaried employees and whose capital is not held over 25% by an entity not fulfilling these conditions, or
be a non-profit organization in the domain of education or research.

Inventor(s)

Name, first names and address.
The designation of inventor(s) can be filed within a 16-month period from the filing date or if a priority has been claimed, from the priority date.

Application

In order to allow us to translate into French the text to be filed, if the latter is in a foreign language, please send us an exemplar (in English, German, Spanish, Italian,...) including the specifications, the claims, the drawings (if the patent application includes drawings) and the abstract (we shall draft the latter in case of need because it must not comprise more than 150 words).

Priority(ies)

country, filing date, filing number
an official copy of the priority document (which can be still validly filed within a 16-month period as from the priority date). No translation of the document is necessary (except the first page if the used language comprises ideograms or Cyrillic script) ;
if the priority document is in the name of another person, an assignment of the priority right is requested together with its French translation. This assignment can still be filed within a 16-month period from the priority date. A simplified form can be filed ; do not hesitate to ask it.

CABINET CHAILLOT

PATENTS TRADEMARKS DESIGNS

French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO