Cabinet Beau de Loménie
The PACTE law and patents : implementing order n° 2020-15 of 8th January 2020, published in the French Official Journal n° 008 of 10th January 2020, sets out the provisions relating to the conversion of a utility model application into a patent application and the (new) provisional patent application.
Conversion of a utility model application into a patent application:
Henceforth a utility model application will be able to be converted into a patent application under the conditions set out by Article R. 612-53 of the Intellectual Property Code (IPC) : “Without prejudice to the provisions of Article R. 612-31, the request for the conversion of the utility model application into a patent application shall be made in writing at any moment during the period of 18 months starting from the filing of the utility model application or the priority date if priority has been claimed, and in any event before the beginning of the technical preparations, foreseen by Article R. 612-39, undertaken for the publication of the utility model application.”
In this situation, the search fee must be paid within a period of one month starting from the date of reception of the request for conversion.
This new possibility of conversion is applicable to utility model applications filed starting from 11th January 2020, the date of entry into force of the implementing order.
Entry into force of provisions relating to the increase in the duration of protection conferred by utility models:
The so-called « Pacte » law, n° 2019-486 of 22nd May 2019, has increased the duration of protection conferred by utility models from 6 to 10 years.
However, the entry into force of this provision was dependent upon the publication of a corresponding implementing order.
This provision is now in force, following the publication of the implementing order on 8th January 2020.
The lengthening of the duration of protection applies to rights in force on the day of the publication of the order and to utility model applications filed subsequently.
Creation of a provisional patent application system in France:
The implementing order specifies practical details relating to the filing of provisional applications, in particular as concerns Articles R. 612-3-1 and R. 612-3-2 of the French IPC.
These provisions will enter into force as of 1st July 2020.
It is thus foreseen that a patent application may be filed as a provisional application, thus enabling the Applicant to postpone the steps needed to make the application compliant through a later filing of the documents mentioned in parts 2°, 3° and 4° of Article R. 612-3, specifically relating to certain documents that normally need to be filed as part of the request for the grant of a patent. The documents concerned thus include « one or more claims » (R. 612-3 2°), « an abstract relating to the technical content of the invention» (R. 612-3 3°) and, where relevant, « a copy of the earlier applications filed whose parts are incorporated » in the application (R. 612-3 4°).
In order to make use of this new system, the request for the grant of a patent must explicitly mention the fact that the patent application is being filed in provisional form.
In this situation, the filing of the various documents is merely optional at the moment of filing of the request for the grant of a patent.
If these documents are not filed at the moment of filing of the request for the grant of a patent, the Applicant must request that the application be brought into compliance, which must take place through a written request by the Applicant to be made at any time within a period of 12 months starting from the filing date or the oldest date claimed by the application.
If the necessary steps are not taken and if the provisional application is furthermore not converted into a utility model within this same period, the provisional application is deemed to be withdrawn. The withdrawn status is confirmed through a decision issued by the Director General of the French Intellectual Property Office (INPI), notified to the Applicant and brought to the attention of the Ministry of Defence.
Where the Applicant of a provisional patent application claims the right to priority deriving from an earlier patent application, the declaration of priority shall be deemed to be a request to bring the provisional application into compliance. Alternatively, the declaration of priority may be accompanied by an explicit request from the Applicant for the conversion of the provisional patent application into a utility model application.
Similarly, the request of the Applicant seeking to have the provisional patent application made public must be accompanied, in order not to be held inadmissible, by a request to bring the application into compliance or, alternatively, by a request for conversion of the provisional patent application into a utility model application.
For a provisional patent application, the search fee must be paid within a period of one month starting from the date of the request to bring the application into compliance.
A new Article R. 612-37.1 has also been added which specifies that the amendments made to the patent application must not extend beyond the content of the application as filed. These provisions, which are of general relevance, should apply, in particular, to the missing parts accompanying a request to bring a provisional patent application into compliance.
It will be necessary to monitor closely the development of the guidelines of the French Intellectual Property Office (INPI) in order to know more precisely the practical details of implementation of these provisions.
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