France’s new PACTE law has set out to modernise utility certificates by increasing their term of protection and adding new provisions to allow applicants to transform utility certificate applications into patent applications. Vincent Robert outlines the implications.
France’s new PACTE law has introduced a series of important changes to the patent and utility model regime in France. This article will explore the impact on utility certificates specifically.
Utility certificates in France
France’s utility certificate broadly corresponds to the "utility model’ available in other countries, such as Germany (‘Gebrauchsmuster’) and China. The main difference being that, in France, protection is not limited to specific types of innovation, whereas in Germany and China, utility models can only be registered to protect products (and not processes).
New measures for utility certificates entered into force, as part of France’s new PACTE law, on 11 January this year (publication of application decree No. 2020-15):
- extending the term of protection to 10 years (from six years previously); and
- adding the possibility to convert a utility certificate into a patent application (only the reverse was possible previously).
A utility certificate application takes the same form as a patent application, but differs through the absence of a search report and, therefore, examination of patentability.
From a practical point of view, the following are of particular note:
- the request for conversion of a utility certificate into a patent application must be submitted before the start of technical preparations for the publication of the utility certificate request (18 months from the priority date); therefore, it is recommended to file the request within 16 months from the priority date (first filing);
- the conversion request is applicable to all applications for utility certificates filed since 11 January 2020;
- the extension of the duration of protection of the utility certificate is applicable to all utility certificates, which are less than six years old, on 10 January 2020 (the date of publication of the decree), subject to payment of the annual fees due.
From a strategic point of view, it is worth noting that the deposit of utility models is a popular strategy in Germany and China, and we expect to see a change in practice in France to take advantage of the new regime. This is even more likely to be the case given the imminent entry into force of examination for inventive step in patent applications.
If there is any doubt about the novelty or inventive step of an invention, for example, it might be appropriate to file an application for a utility certificate or to transform its patent application into an application for a utility certificate, to avoid the risk of rejection.
The utility certificate could also be a good option for SMEs that are hesitant to file a patent application, or who cannot afford to file or keep in force a patent application for each of their patentable inventions. The cost of filing is expected to be very close to that of a patent application, but the cost of the examination procedure will be lower since it is limited to a formal examination.
Finally, filing a utility certificate application in parallel with a patent application, as is already the case in Germany and China, is of strategic interest, particularly for an applicant who wishes to obtain a right quickly in order to act against a third party.
For further information about this topic or France’s new PACTE law in general, please speak to your Novagraaf attorney or contact us below.
Vincent Robert is a Patent Attorney and Director of the Mechanical Department at Novagraaf in Paris.