Summary

Filing a French Patent or a French Certificate of Utility?

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.

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 transfer. In fact, it is always possible 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). However, if the French patent application is filed under foreign priority, you have in fact only six months to decide.

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.

French Patent Application with Preliminary Examination Request

Immediately after filing

An examination as to the form is carried out. In case of irregularities, a period (generally one month) is given to the applicant for regularizing the application.

In case of non-unity of the invention, the applicant is asked to file a divisional application within 2 months from the notification. This objection can be contested.

In case of priority claiming, the priority document can be filed within a 16-month period from the priority date.

National Defence

The French National Defence studies the patent applications filed without claiming any priority. As long as the disclosure and work authorization is not granted, it is temporarily forbidden to disclose and freely work the invention.

Preliminary Search Report

About 9-10 months after filing, the French Office of Industrial Property (INPI) sends a preliminary search report containing references which may be taken into consideration as to novelty and inventive step. If particularly relevant references are cited, the applicant must answer within a 3-month period once renewable.

The response consists either in observations or in amendments to the claims.

Priority year, foreign extension

When the French application is a first one, within a 12-month period from the filing date the applicant may file foreign patents applications (PCT international application, European patent application, and national applications) having the benefit of the French application date.

Publication

18 months after the filing date, the patent application is published in the Official Bulletin of Industrial Property (BOPI), as well as the preliminary search report (citing the cited references) if available (if not, it will be published at a later date).

From the publication, third persons have a 3-month period to file observations and to cite references. The applicant then has to respond within a 3-month period once renewable from the notification of the observations. This procedure is in fact rarely used.

Grant of the patent

After the examination procedure, the INPI indicates that the patent is about to be granted. The grant and printing fees have to be paid.

Without any further requirements, protection of a patent in France gives also rights in the "Overseas Departments" (Guadeloupe, Martinique, Reunion and French Guyana), in the "Overseas Territories" (French Polynesia, Wallis and Futuna, the French Austral Islands and the French Antartic territories), in the "Territorial Collectivities" (St Pierre and Miquelon, Mayotte) and in New Caledonia and dependencies.

Renewal fee

Patent is a title delivered for a term of 20 years from the filing date. However, renewal fees have to be paid each year in order to maintain this title in force.

Working out

A patent owner has the obligation of working out the patent. The lack of working out for a 3-year period from the grant of the patent or 4-year period from the filing date (the longer one) or an insufficient exploitation allow a third person to ask for a compulsory licence.

Opposability to others

Any transfer or modification of the rights shall be recorded as soon as possible in the National Register of Patents in order to always be opposable to third ones.

Requirements

Particulars relating to the Applicant or to each Applicant in case of a filing in co ownership

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 ...).

Particulars relating to the inventor or to each of them in case of a plurality of inventors

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.

Particulars relating to the patent (or certificate of utility) 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 200 words).

Particulars relating to the immediate or postponed establishment of the preliminary search report

At the time of the filing of the application, we have to know your instructions as to the immediate or the postponed filing of the petition for the preliminary search report.

In the latter case, if this petition is not filed before the expiry of a 18-month period from the priority date or from the filing date if no priority is claimed, we shall be notified that the application will be ex officio transformed into an application for a Certificate of Utility (maximum duration: 6 years from the filing date instead of 20 years for a patent), unless the applicable fee and a fine are paid within 2 months from this notification.

An application for a Certificate of Utility may also be filed directly. However, in case of an action for infringement of a Certificate of Utility, the plaintiff must request the establishment of the preliminary search report; however, he has no occasion to amend the claims after receiving this report.

The patentability requirements for a Certificate of Utility and for a Patent are the same: novelty, inventive step and industrial applicability.

In fact, it is always possible 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 usually 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.

If the establishment of the preliminary search report is postponed, the search report does not reach us before 6 to 10 months as a rule, as it is the case if the establishment of the search report is not postponed.

Particulars relating to the priority (if a priority is claimed) or to each priority (in case of multiple priorities)

-         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.

Power of Attorney

No power of attorney is needed for the filing.