- Provisional patent application
The Pacte Act of 2020 introduced a new industrial property right: the provisional patent application, which can be filed in France before the French patent office as from 01/07/2020.
Unlike a ‘classic’ patent application, no formalism is required for filing a provisional patent application. For example, it is not necessary to file claims: only a description of the invention must be filed. This description can take the form of a technical brief or of a traditional description with the same formalism as that of a regular patent application.
Another advantage of the provisional patent application is that only the filing fee needs to be paid, at the latest within one month of filing. It is not necessary to pay the fee for drawing up the preliminary search report.
The applicant has a period of 12 months from the filing of the provisional patent application to switch from provisional status to ‘classic’ status:
- either by regularization into a patent application, in which case he/she will have to provide a patent application in the usual form with one or more claims, an abstract and drawings, and pay the fee for drawing up the preliminary search report;
- or by conversion into a utility certificate application, in which case the applicant must submit a patent specification in the usual form with one or more claims, an abstract and drawings.
If it is not regularized/converted within 12 months, the provisional patent application will be deemed to have been withdrawn and will not be published.
The provisional patent application allows the mention ‘patent application pending’ to be used and gives rise to a one-year priority right. Its main advantage lies in the fact that the description filed does not have to comply with the usual cumbersome formalism.
However, the provisional patent application remains a dangerous tool. It is not possible to add any technical information at the time of regularization. If the provisional patent application is drafted in a haphazard manner, it will usually not be possible to bring it into line with a regular patent application, because the initial filing will lack the essential elements for a formal claiming of the invention.
Furthermore, late regularization, towards the end of the 12-month period from filing, will mean that the preliminary search report will not be drawn up before the end of the priority period resulting from the filing of the provisional application (also 12 months from the filing of the provisional application), which means that the costs of extending patent protection for the invention outside France will have to be incurred without any knowledge of the patentability of the invention.
It is therefore preferable, even in a very short space of time, either to postpone disclosure, for example by means of confidentiality agreements, or to file a patent application that complies with the usual formalities, in order to obtain a preliminary search report within the priority period, even if this means filing another patent application under internal priority in France in the event of improvements.
- Certificate of utility
A certificate of utility application is subject to the same formal requirements as a patent application. There is therefore no real advantage in terms of drafting costs compared with a patent application. Both applications give rise to a right of priority.
However, the certificate of utility application is not examined on its merits, and is therefore granted automatically subject to compliance with the formal requirements, approximately 6 months after publication of the application. The fee for drawing up the preliminary search report is therefore not due. The other fees (filing, claims over 10, grant, annuities) are the same for certificate of utility applications and patent applications. The savings between the two procedures will therefore be due exclusively to the fee for drawing up the preliminary search report and any fees for replying to the preliminary search report. Because there is no substantive examination, the maximum term of a certificate of utility is 10 years from filing, compared with 20 years for a patent. Furthermore, a prerequisite for any legal action based on a certificate of utility will be a request to the French patent office for the preliminary search report to be drawn up, which is likely to delay the legal action.
The filing of a certificate of utility application should therefore be reserved for products with a short life span, for which industrial property protection will be a commercial argument and for which no legal action is contemplated.
It should be noted that it is possible to convert a certificate of utility application into a patent application, or vice versa, within 16 months of the filing date.