The provisional provisions

Further to the recent enactment of the loi PACTE, a game changer for French patent law, a whole bunch of implementing rules was due to ensue.

We have now had a glimpse of what the first salvo of the implementing rules will look like, as the DGE (Direction Générale des Entreprises) has just released a draft of executive order. Comments are in the process of being collected by various professional associations such as the CNCPI, the French AIPPI group, and others.

The purpose of this draft executive order is twofold: to redesign the rules on utility certificates; and to introduce the concept of provisional patent applications.

Let’s start with utility certificates. As a reminder, according to article 118 of the loi PACTE, the maximum duration of utility certificates is supposed to be brought from 6 years to 10 years; and it will now be possible to convert a utility certificate application into a patent application, whereas only the opposite is possible as of today.

The draft executive order specifies that the request to convert a utility certificate application into a patent application needs to be filed within 18 months from the filing or priority date, and at any rate before technical preparations for publication are completed. The deadline for requesting the opposite conversion (from patent application to utility certificate) will be aligned accordingly.

Protection of legal certainty for third parties was certainly the main concern here. By the time the patent application or utility certificate gets published, the fate of the IP right will be fixed – either patent or utility certificate application.

The main difference then between a patent application which was filed as such and a patent application stemming from a utility certificate application is that the former will generally be published together with a search report (assuming that it is a first filing), while the latter may not (since no search report is established for utility certificates). I wrote “assuming that it is a first filing“, because search reports for patent applications claiming a foreign priority are generally established at a (much) later stage.

The deadline for paying the search fee for a utility certificate application converted into a patent application will be 1 month from the request for conversion.

Regarding the increase in duration of utility certificates, from 6 to 10 years, a big question mark at the time the loi PACTE was published was that of transitional provisions.

A note issued by the DGE together with the draft executive order mentions that, in the absence of any specific provision in the law, the 10-year duration will apply to all utility certificates in force at the date of entry of the law into force.

The note explains that an IP right is not an “acquired right” but an “ongoing legal situation“, which justifies this solution – which would be different if, for instance, we were talking about a statute of limitations.

I guess the protection of interests of third parties was not so much of a concern for this part.

Interestingly, special transitional measures are planned for utility certificates which are almost 6-years old when the law enters into force. It will exceptionally be possible to pay the 7th renewal fee up to four months after the entry into force of the executive order (or within an additional 6-month grace period starting from the expiry of the above deadline).

Stretching utility certificates.

This now brings us to the second aspect of the draft executive order, namely the advent of provisional patent applications.

This was not mentioned in the loi PACTE and is a complete creation of the executive order. But we knew that it was coming, since rumor has it that it has been one of President Macron’s pet projects for a number of years.

So here is what we will be looking at:

  • A provisional application shall comprise a request for grant, a description and drawings. Claims and an abstract may be included – but they are not required. Similarly, when a French priority is claimed, a marked up copy of the prior filing must be included when a regular patent application is filed, but this will not be necessary if a provisional patent application is filed.
  • Only the filing fee is due, within one month after filing (whereas, for a regular patent application, also the search fee is due within the same deadline).
  • The applicant may request that the provisional application be made “compliant”, i.e. that it be transformed into a regular patent application, or into a utility certificate application, within 12 months from the priority date. I understand that this will require filing the claims / abstract / marked up copy of the prior filing, if these elements were not provided on the filing date – though I must say that this is not clear in the draft.
  • If this is not the case, the provisional application will be deemed withdrawn (this notion of fictional withdrawal is one which we are very familiar with under the EPC, but it is new in French patent law).
  • The deadline for paying the search fee will be one month after filing the request to make the application compliant.
  • A patent application cannot be made “provisional” after filing, it has to be marked as provisional from the start.
  • The defense administration will review provisional patent applications and authorizations to disclose the invention will be issued, similarly as for regular patent applications.
  • The provisional application can claim a French priority, as suggested above.
  • However, if there is a Paris Convention priority claim, then this will be interpreted as a request to make the application compliant – so, the applicant will not be able to keep its application as a provisional one. My understanding is that this may be because a Paris Convention priority claim can be filed up to 16 months after the earliest priority date, which sort of conflicts with the 12-month deadline for making the provisional application compliant.
  • If the applicant files a request for early publication, a request to make the provisional application compliant will have to be filed at the same time, otherwise the request for early publication will be inadmissible.

So, what can we make of these new provisional patent applications?

This is a new tool that few – if any – in the patent profession asked for. In fact, most of us did not understand at all what the point was.

It should be borne in mind that getting a filing date for a (regular) patent application (which may thus serve as a basis for claiming priority in France or abroad) only requires filing a description.

The claims and abstract are not necessary. Neither is the payment of any fee (not even the filing fee). So, regular patent applications already provided the same benefits as the future provisional patent applications.

The way I see it, the only difference is that a provisional application can be made into a regular patent application without having to refile. But this is a very slight advantage, and it will also result in an overall duration of scope of protection which will be reduced (since, when you refile 1 year after the initial filing, you can get 20 years of protection from the second filing).

Even after reading the draft executive order, I still cannot see in what circumstances I would recommend filing a provisional patent application.

The answer to the conundrum can probably be found in the following statement in the DGE’s explanatory note:

Feedback from innovative business and start-up entrepreneurs has shown that they are reluctant to undertake to protect their inventions. The patent filing system, due to its formalism, is often perceived as onerous and costly. 

I would thus say that all of this is really about communication and perception, not about actually providing additional useful legal tools to applicants.

After all, this can be a valuable reason. Let’s not underestimate the importance of communication and perception.

However, one major concern is that this communication and perception effort may ultimately result in miscommunication and misconception.

If “innovative business and start-up entrepreneurs” believe that filing a draft of scientific paper, or even an invention memo, as a provisional application, without drafting claims and without working with a patent professional, can serve as a basis for a strong future patent application, or even can secure them a priority date, they are in for some serious disappointment. Think G 2/98; and think “gold standard“, which is applied under French law in a similar manner as at the EPO.

Patent law is complex, patent rights are difficult and costly to obtain and enforce. This is a fact, not an erroneous perception. Aren’t people better off if they are aware of this reality, rather than believe that a provisional filing is a cure-all?

A last word on the date of entry into force of the new system.

The rules on the transformation of utility certificate applications into patent applications will enter into force the day after the publication of the executive order. As for the rules on provisional patent applications, they will enter into force on July 1, 2020.

Please bear in mind that the executive order is not yet in its final form and that the draft may still be amended, especially based on input from stakeholders. But I suspect that only minor bugs will be fixed, and only clarifications / editorial changes will be made.

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