French PACTE Act: Provisional Patent Application and the Evolution of the Utility Certificate

The decree implementing the PACTE Act of May 22, 2019, on the creation of a provisional patent application and the evolution of the utility certificate was passed on January 8, 2020, and published in the French Official Journal of January 10, 2020. It provides for the implementation of two important features of the PACTE Act: the new provisional patent application and amendments to the utility certificate.

Provisional Patent Application

The PACTE Act has created the possibility of filing a patent under a provisional application form, which is a low-cost, simplified process designed to allow applicants to:

• swiftly file a description of their invention (without filing claims or abstract);
• benefit from the earliest priority date possible without going through an examination process (Article R. 612-3-1 of the Intellectual Property Code ("IPC")); and
• be able to use the term "patent pending" (in compliance with L. 615-12 IPC).

The provisional patent application must then be "brought into compliance" with the requirements of a regular patent within 12 months of its filing date by supplementing it with one or several claims and a technical abstract of the invention.

In absence of the provision of such a compliance request, the provisional patent application is deemed to be withdrawn. In case of such withdrawal, the provisional application is not to be published and does not become novelty destroying prior art.

The provisional patent application will create a right of priority from its filing date.

Based on the experience of provisional patent applications widely used in the United States, careful drafting of the provisional application will still be necessary so that the description of the innovation is sufficiently protective and complies with the obligation that the future claims be supported by the description (L. 612 -12, 8° IPC).

The possibility of filing provisional patent applications will start on July 1, 2020.

Amendments Concerning the Utility Certificate

The utility certificate confers protection identical to that of a patent but for a shorter period of time. It does not require the establishment of a search report, which must nevertheless be drawn up if an infringement action is brought on the basis of the utility certificate.

The PACTE Act brought two important changes regarding duration and conversion possibilities:

• the duration of the certificate of utility has been raised from six to 10 years (Article L. 611-2 IPC).
• the possibility of converting an application for a utility certificate into a patent has been introduced (Article L. 612-15 IPC); previously, it was only provided that a patent application could be converted into a utility certificate, particularly when the applicant did not wish to establish a search report.

The request for conversion of the utility certificate application into a patent application must be made in writing at any time during the period of 18 months following the filing of the utility certificate application or the priority date—if priority has been claimed before the start of the technical preparations provided for in Article R. 612-39, undertaken with a view to publication of the utility certificate application (R. 612-53 IPC).

In practice, the conversion will thus have to be requested within 16 months of filing.

Utility certificates are widely used in Germany where they are called "utility models." Like the new French utility certificates, German utility models have a maximum duration of 10 years. They are often branched off from patent applications (but the protection of methods is not possible). Such a branch off is possible within 10 years of the filing date of the patent application as long as the patent application is pending, or within two months after the closure of the patent application procedure. German utility models are registered without a substantive examination. Only formal requirements are checked. This allows registration of a utility model to be reached in one to two weeks. This is especially helpful in cases in which the patentability of a patent application has been confirmed but the grant of the patent takes longer. Thus the utility model allows an earlier enforcement. In past years, around 12.000 utility models have been registered each year, and at the moment around 80.000 utility models are in force in Germany.

It remains to be seen whether, as a result of the extension of the duration of protection and the conversion option, French companies will take a greater interest in the utility certificate, which they have, until now, largely ignored.

The measures on the utility certificate entered into force on January 11, 2020, for titles filed from this date, and the conversion feature is immediately operational on the French IP Office's e-procedures portal.

A transitional period is provided to allow utility certificate holders who are in the sixth year to pay the annuity without any overcharge. All due dates for a seventh annuity—expected at the end of January 2020, the end of February 2020, the end of March 2020, or the end of April 2020—are postponed to May 11, 2020, without a late payment fee. After this date and until November 12, 2020, it will still be possible to pay the seventh annuity for these utility certificates but with a 50% late payment overcharge.