Provisional application

From July 1, 2020, it will be possible to file provisional patent applications in France.

A quick overview of what a provisional request is…

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Chapter 1. Submission of a provisional application

Section 1.1. Definition

A provisional request (see the Decree No. 2020-15 of January 8, 2020, relating to the creation of a provisional patent application) is a patent application, some of which filing requirements may be deferred over time.

Section 1.2. Delivery of certain deferred parts

Indeed, the future article R612-3-1 CPI indicates that it is possible, in the case of a provisional request, to postpone the delivery of the documents mentioned in 2 °, 3 ° and 4 ° of the article R612-3 CPI :

  • the revendications
  • the abstract and
  • a copy of the previous documents.

Section 1.3. Payment of certain deferred royalties

Only the filing fee (R612-5 CPI) must be paid within a time limit 1 month from the deposit.

The research report fee can be paid within1 month from the request for compliance (R612-5 CPI).

Section 1.4. Other requirements

A priori, all the others requirements remain valid:

  • Translation of the request under 2 months (R612-21 CPI, paragraph 2)
  • Supply of the request for grant (R612-3 CPI) ;
  • Payment of the filing fee (R612-35 CPI, paragraph 1 together R612-5 CPI) within 1 month ;
  • Designation of inventors (which can be a challenge since we have no claims yet…);
  • Internal priority claim during the deposit demand (R612-25 CPI, 1 °);
  • Appointment of an agent;
  • Respect for the formal rules of the text and the drawings (including the docx);
  • List of nucleotides and amino acids.

Chapter 2. Modification of the provisional application

Article R612-37-1 CPI provides that the modifications made to the patent application must not extend its subject beyond the content of the application as it was filed.

It's happy ...

However, this formulation puzzles me:

  • if that means that the claims that we will provide must be well supported by the description, I do not see what that brings compared to the L612-12 CPI 8 °.
  • if this means that one can modify the description of a provisional request, this is not very clear, because the only modifications provided by the code for modifications to the description are:
    • error correction of the article (R612-36 CPI) ;
    • the correction of irregularities in examining the article R612-37 CPI.

In addition, this beautiful article R612-37-1 CPI does not present any direct legal consequence: what happens if the depositor does not respect these prescriptions?

Chapter 3. Advance publication

It is not possible to obtain an advance publication (R612-39 CPI) a provisional request: it must be transformed into a utility certificate or submit a request for compliance before (R612-39-1 CPI).

Chapter 4. End of provisional request

Section 4.1. Compliance or transformation

In a delay of 12 months (R612-3-2 CPI) a provisional request can, on written request:

  • be brought into compliance to become a “normal” patent application, or
  • be transformed into a utility certificate.

The deadline for 12 months runs from the date of filing of the provisional application or the “earliest date from which it benefits”.

According to my interpretation, the formulation “earliest date from which it benefits” may aim:

  • a divisional application (L612-4 CPI) ;
  • an “internal” priority (L612-3 CPI) (and not a CUP priority…).

A priori, the continuation of procedure of the article R612-52 CPI does not apply to this period of 12 months since its non-compliance does not lead to rejection. Recourse to restore the article L612-16 CPI nevertheless seems possible.

Section 4.2. Deemed application withdrawn

If no transformation or compliance is requested, the request is deemed to be withdrawn (R612-3-2 CPI), and this is established by a decision of the INPI.

Strangely enough, this INPI decision does not seem to be provided for in the article L411-4 CPI : therefore, one can legitimately wonder whether an appeal against this decision is possible.

It should be noted that this notion of “deemed withdrawn” has been absent from the ICC so far… a borrowing from the European procedure?

Chapter 5. Criticism

Section 5.1. Lack of provisional request

The French provisional application does not really do any better for the applicant: he would obtain exactly the same effects by filing a “normal” application, but without paying any fees.

Admittedly, his “normal” request would be quickly rejected for default, but he could always claim priority for this request since he would get a deposit date valid.

In short, the provisional request will cost him more… and he will have to continue to respect a large number offiling requirements.

Section 5.2. Complexification of legislation

Furthermore, as we have seen, this provisional request introduces into French law a large number of new and derogatory provisions.

These provisions are sometimes complex to interpret and are likely to create legal uncertainty for applicants using this new provisional application system.

I tried in this article to raise all the wolves I could see, but I am sure there are others…

Section 5.3. Risk concerning the understanding of applicants and inventors

We can read, here or there, that the provisional requests will allow the depositor to be able to protect himself at a lower cost by quickly writing a brief description.

Nothing is more wrong.

Indeed, the deposit text will remain the container setting the limits of what can be protected by the claims (L612-12 CPI 8 °).

It is important not to deceive French inventors in this regard.

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