As of July 1, 2020, it will be possible to file provisional patent applications in France.
A brief overview of what a provisional application is…
Filing a provisional application
Definition
A provisional application (see Decree No. 2020-15 of January 8, 2020, on the creation of a provisional patent application) is a patent application for which certain filing requirements may be deferred over time.
Deferred submission of certain documents
Indeed, the future article R612-3-1 CPI states that, in the case of a provisional application, it is possible to defer the submission of the documents mentioned in paragraphs 2°, 3°, and 4° of article R612-3 CPI:
- the claims, the abstract, and
- the copy of prior art documents.
Deferred payment of certain official fees
Only the filing official fee (R612-5 CPI) must be paid within one month from the filing date.
The official fee for the search report may be paid within 1 month from the request for compliance (R612-5 CPI).
Other requirements
All other requirements remain applicable:
- Translation of the application within 2 months (R612-21 CPI, paragraph 2);
- Submission of the request for grant (R612-3 CPI); Payment of the filing official fee (R612-35 CPI, paragraph 1 together with R612-5 CPI) within 1 month;
- Designation of inventors (which may be challenging since claims are not yet available…);
- Claiming internal priority at the time of filing the application (R612-25 CPI, 1°);
- Appointment of a representative;
- Compliance with formal rules for the text and drawings (including regarding the docx format);
- Listing of nucleotides and amino acids.
Amendment of the provisional application
Article R612-37-1 CPI provides that amendments to the patent application must not extend its subject matter beyond the content of the application as filed.
This is reassuring…
However, this wording leaves me perplexed:
- if it means that the claims to be submitted must be fully supported by the description, I do not see how this differs from L612-12 CPI 8°;
- if it means that the description of a provisional application may be amended, this is not very clear, as the only amendments provided for in the code regarding description modifications are:
- the correction of errors under article (R612-36 CPI);
- the correction of irregularities during examination under article R612-37 CPI.
Furthermore, this fine article R612-37-1 CPI does not specify any direct legal consequences: what happens if the applicant does not comply with these provisions?
Early publication
It is not possible to obtain early publication (R612-39 CPI) of a provisional application: it must be converted into a utility certificate or a request for compliance must be submitted beforehand (R612-39-1 CPI).
Termination of the provisional application
Compliance or conversion
Within a period of 12 months (R612-3-2 CPI), a provisional application may, upon written request:
- be brought into compliance to become a « regular » patent application, or be converted into a utility certificate.
The 12-month period runs from the filing date of the provisional application or the « earliest date to which it is entitled ».
In my interpretation, the wording « earliest date to which it is entitled » may refer to:
- a divisional application (L612-4 CPI);
- an « internal » priority (L612-3 CPI) (and not a Paris Convention priority…).
Prima facie, the further processing provision under R612-52 CPI does not apply to this 12-month period since failure to comply does not result in a refusal. However, a request for re-establishment under L612-16 CPI appears to remain possible.
Application deemed withdrawn
If no conversion or compliance is requested, the application is deemed withdrawn (R612-3-2 CPI), and this is recorded by a decision of the INPI.
Somewhat surprisingly, this INPI decision does not appear to be provided for under L411-4 CPI: thus, one may legitimately question whether an appeal against this decision is possible.
It should be noted that the concept of « deemed withdrawn » was previously absent from the CPI… a borrowing from the European procedure?
Critique
Lack of added value of the provisional application
The French provisional application does not truly benefit the applicant: the same effects could be achieved by filing a « regular » application without paying official fees.
Admittedly, the « regular » application would be swiftly refused for failure to pay official fees, but the applicant could still claim priority from this application since a valid filing date would be obtained.
In short, the provisional application will cost more… and the applicant will still have to comply with numerous filing requirements.
Increased complexity of legislation
Furthermore, as we have seen, this provisional application introduces numerous new and derogatory provisions into French law.
These provisions are sometimes complex to interpret and will likely create legal uncertainty for applicants using this new provisional application system.
I have attempted in this article to address all the issues I could identify, but I am certain there are others…
Risk regarding applicants’ and inventors’ understanding
We may read here and there that provisional applications will allow applicants to secure protection at a lower cost by hastily drafting a brief description.
This is entirely false.
Indeed, the filing document will remain the container defining the limits of what may be protected by the claims (L612-12 CPI 8°).
It is important not to mislead French inventors in this regard.