As of July 1, 2020, it will be possible to file provisional patent applications in France.
A brief overview of what a provisional application entails…
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.
Deferred Submission of Certain Documents
Indeed, 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 subparagraphs 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 one 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 in conjunction with R612-5 CPI) within one month;
- Designation of inventors (which may be challenging since claims are not yet available…);
- Claiming of 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 this means that the claims to be provided 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 the description are: correction of errors under Article (R612-36 CPI);
- 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 fails to 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).
End of the provisional application
Compliance or conversion
Within a period of 12 months (R612-3-2 IPC), a provisional application may, upon written request:
- be brought into compliance to become a « standard » patent application, or be converted into a utility certificate.
The 12-month period runs from the date of filing 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 IPC);
- an « internal » priority (L612-3 IPC) (and not a Paris Convention priority…).
Prima facie, the further processing provision under R612-52 IPC does not apply to this 12-month period since failure to comply does not result in rejection. However, a restoration request under L612-16 IPC appears to remain possible.
Application deemed withdrawn
If no conversion or compliance is requested, the application is deemed withdrawn (R612-3-2 IPC), and this is recorded by a decision of the INPI.
Somewhat curiously, this INPI decision does not appear to be provided for under L411-4 IPC: thus, it is legitimate to question whether an appeal against this decision is possible.
It should be noted that the concept of « deemed withdrawn » was previously absent from the IPC… 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: they would achieve exactly the same effects by filing a « standard » application without paying official fees.
Admittedly, their « standard » application would be swiftly rejected for failure to pay official fees, but they could still claim the priority of this application since they would obtain a valid filing date.
In short, the provisional application will cost them more… and they 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 the understanding of applicants and inventors
We may read here and there that provisional applications will allow applicants to protect their inventions at a lower cost by hastily drafting a brief description.
Nothing could be further from the truth.
Indeed, the filing text will remain the container defining the limits of what may be protected by the claims (L612-12 IPC 8°).
It is important not to mislead French inventors in this regard.