French PACTE Act: Provisional Patent Application And The Evolution Of The Utility Certificate


In Short

The Situation: Provisions of the Action Plan for the Growth and Transformation of Enterprises Act ("PACTE Act") concerning the newly created provisional patent application and the strengthening of the utility certificate are entering into force in France.

The Result: Utility certificates now have a duration of 10 years and may be converted into patents. Applicants will be able to file provisional patent applications beginning July 1, 2020.

Looking Ahead: The creation of a provisional patent application and the evolution of the utility certificate are among several important changes brought by the PACTE Act to French patent law in an effort to strengthen and modernize the French patent system. More changes, including the possibility of filing oppositions against patents granted by the French Patent Office, are still to come.

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In absence of the provision of such a compliance request, the provisional patent application is deemed to be withdrawn. In case of such withdrawal, the provisional application is not to be published and does not become novelty destroying prior art.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

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