News with the PACTE Act regarding patents!

The publication of Decree No. 2020-15 of January 8, 2020 paves the way for two new measures regarding the protection of inventions.

  • The first measure concerns applications for utility certificates

A utility certificate is a title that allows a technical invention to be protected without an examination of its patentability being carried out by the INPI. It is particularly interesting for protecting inventions with a short life span.

Its maximum duration has been extended from 6 to 10 years by the implementation of the Pacte law in 2019.

Furthermore, since January 11, 2020, whereas until now only a patent application could be transformed into a utility certificate application, it is now possible to also transform a utility certificate application into a patent application within a limited period of time after its filing (16 months).

These new measures are all the more important in view of the new amendments relating to the examination of the patentability by the INPI of French patent applications filed as of May 22, 2020, which will cover not only novelty as previously, but also inventive step.

These new amendments will thus make the granting of a French patent longer and more difficult than hitherto. They could therefore lead to renewed interest among applicants for the new utility certificates.

Thus, this new measure offers more flexibility to applicants in their protection strategy.

  • The second measure concerns the creation of a provisional patent application.

From 1 July 2020, it will be possible to file a provisional patent application.

Simple and inexpensive, this procedure will make it possible to establish a date in terms of priority, with a lighter content.

The applicant will then have a period of 12 months to transform this provisional application into a patent application or utility certificate application, the contents of which must then be completed, if necessary, to meet the usual requirements.

While this measure is in theory intended to facilitate access to intellectual property, in particular for SMEs, start-ups and individual inventors, its simplicity could prove misleading and have a negative effect on the uninformed. Indeed, the descriptions used as a basis for the filing of provisional applications may not be sufficient to describe the invention in detail, so that the theoretical benefit of taking the date may not be realized in practice, as the elements to be added do not benefit from the earlier date. It is therefore a tool to be handled with great care, taking advice from specialists.

Do not hesitate to revert to us for advice adapted to your situation.

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