French Utility Certificates to Become a More Attractive Alternative to Patents
France used to have quite a unique status regarding both patents and utility certificates (elsewhere known as utility models or petty patents):
- The French patent examination procedure was quite straightforward, since it included only a search (subcontracted to the European Patent Office) and one opportunity for the applicant to amend the patent claims after receipt of the search report, but almost no substantive examination of the amendments or of the patentability requirements by the French Intellectual Property Office before being granted.
- Utility certificates had exactly the same patentability standard as the patent (i.e., novelty, inventive step, industrial applicability), but with a duration of only 6 years. Its only advantage was the absence of a search and search fee.
All in all, the balance was strongly in favour of patents, which combined the advantages of a long duration (20 years), and a streamlined grant procedure without a full substantive examination, for an altogether reasonable price. Therefore it comes to no surprise that utility certificates accounted for less than 3% of the total number of filings!
However, the pendulum may soon swing in favour of utility certificates as a result of recent changes to the French Intellectual Property Code:
- As of January 11th, 2020, the duration of utility certificates has been extended to 10 years (with a transition period for utility certificates filed in the last 6 years) to be in line with similar IP rights abroad. Moreover, the utility certificate can now be transformed into a patent application at any time up to the end of the preparation of its publication (usually 16 months from the priority date).
- As of April 1st, 2020, an entirely new opposition procedure will be introduced which will enable third parties to oppose the grant of a patent but will not be applicable to utility certificates.
- As of May 23rd, 2020, all new patent applications will be subject to a full-scale examination of the patentability requirements.
It can be expected that the costs associated with the grant procedure for patent applications will increase in terms of time and attorney fees. Moreover, the lack of familiarity of the French Intellectual Property Office with the new examination and opposition procedures will certainly contribute to a certain level of unpredictability.
In a context where applicants are offered a choice not only between national patents and utility certificates but also between national and European protection through the European Patent Office, it is likely that French National patents will lose some of their attractiveness:
- Domestic applicants may still file French National applications to get a subsidised search report within 9 months before deciding whether to file abroad, but may decide to transform their patent application into a utility certificate after receiving the search report to avoid the examination costs, at least when they decide to extend their protection with a European patent.
- Foreign applicants will be more likely to file European patent applications to avoid the uncertainty of an unproven national system. They should, however, also consider the merits of a utility certificate whenever the 10-year protection is deemed sufficient.
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