What are the main informations and documents required for filing a French patent or certificate of utility ? What is the difference between a French patent and a certificate of utility (or utility model) ? How to validate in France a European patent or a PCT patent application ?
Requirements for filing. A French patent application consists of:
- a request for grant indicating the applicant(s) (for a natural person: Name, first names, nationality and address / for a legal entity: Legal name, legal form and address) and the inventor(s) (name, first names and address, within a period of 16 months from the filing date or if a priority has been claimed, from the priority date).
- a description of the invention;
- drawings (if any);
- an abstract;
- when appropriate, priority(ies) claim : country, filing date, filing number, together with an certified copy of the priority document (which can be still validly filed within a time period of 16 months from the priority date);
- if the priority document is in the name of another person, an assignment of the priority right is requested together with its French translation (which can be still validly filed within a time period of 16 months from the priority date);
- payment of an official fee (a reduction of fee is applicable for "small entities". A natural person is a small entity. For a legal entity, a declaration must be filed within one month from the filing date. The condition for beeing a small entity are: (i) be a small or medium-sized enterprise with less than 1000 salaried employees and whose capital is not held over 25% by an entity not fulfilling these conditions, or (ii) be a non-profit organization in the domain of education or research.).
No power of attorney is needed for the filing.
Applications can be filed at the INPI in any language. However, the official languages of the INPI is French. If the application is not filed in French language, a translation has to be submitted within a time period of 2 months.
Validation of a granted EP patent in France. When a European patent is granted, it is necessary to validate it in the designated countries of interest. Renewal fees have to be paid in each country. The filing of a French translation of the specification is not required for validation in France (of European patents granted after 01/05/2008).
No direct FR/PCT phase. It is not possible to file directly a French patent application as entry into national phase of an international application (PCT). The only way to obtain patent protection in France is to enter the European regional phase and then validate it in France, together with any other European contracting State which may be of interest to you. As stated above, no translation will be requested to validate a European patent in France, Germany, United-Kingdom and other countries.
Certificate of utility. The necessary papers for filing a Certificate of utility are the same as those listed above for a patent. However, contrary to a patent, no search report is required for a Certificate of utility. However, the patentability requirements remain the same : novelty; inventive step; industrial applicability. A Certificate of Utility (like a patent) is published 18 months from the filing date or the priority date. Generally the grant of a certificate of utility takes place 2 years from the filing (instead of 3 years for a patent). It is possible to accelerate the granting of a certificate of utility by requesting earlier publication. In case of an action for infringement, the plaintiff shall request with INPI a search report and pay the corresponding fee, but is not given a chance to amend the claims in order to take into account any relevant prior art. This is a serious disadvantage. Conversion of a certificate of utility application into a patent application is not allowed.