Publication Of Decree No. 2020-15: A Risky Simplification Of Patent Proceedings.

Author:Mr Francois Pochart, Elodie Bardon and Lionel Martin
Profession:August Debouzy
 
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Following the adoption of the PACTE law of May 22, 20191, the decree No. 2020-15 dated from January 8, 2020 and "relating to the creation of a provisional patent application and the transformation of a utility certificate application into a patent application", was published in the Official Journal on January 10, 2020.

If the provisions concerning the transformation of utility certificates are enforceable for filings made as from January 11, 2020; those concerning the provisional patent application are enforceable as from July 1st, 20201.

The provisional patent application. First of all, the possibility of obtaining a filing date by disclosing only a description of the invention already existed, and this, without paying an official fee2. The present decree therefore seems to institute a "new" alternative for patent applicants: to file a provisional patent application that can be regularized within twelve months.

Make no mistake about it, this provisional application can be very dangerous:

This provisional application allows a description of the invention to be filed without claims. Without the help of a professional such as an industrial property attorney or a lawyer in this drafting phase, the risk is real. Indeed, a poorly drafted provisional application will hinder the future drafter of the patent claims (the law imposing this drafting at a later stage called regularization), by preventing him from properly delimiting the invention. The second risk relates to the false sense of security caused by the provisional deposit. This sense of security may lead the applicant to disclose his invention. However, at the time of regularization, it is conceivable that the drafter may not be able to derive relevant claims from the provisional application. Thus, an applicant who has already disclosed his invention would be unable to make a new patent application, properly delimited, for lack of novelty in relation to his own early disclosure. The same problem will arise in the case of foreign extensions, where claims are not given priority. Finally, the applicant for a provisional application wishing to extend his patent internationally will conduct the filing procedure in France and in third countries in parallel. In doing so, he will not have been able to benefit from the research report provided by the INPI3 and will have to do "blind" foreign extensions. This will also create difficulties in the payment of the fees for the research report, since...

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