Article Technologies - Media - IP | 17/01/20 | 6 min. | François Pochart Lionel Martin Elodie Bardon
Following the adoption of the PACTE law of May 22, 2019, the decree No. 2020-15 dated from January 8, 2020 and "relating to the creation of a provisional patent application and the transformation of a utility certificate application into a patent application", was published in the Official Journal on January 10, 2020.
If the provisions concerning the transformation of utility certificates are enforceable for filings made as from January 11, 2020; those concerning the provisional patent application are enforceable as from July 1st, 20201.
First of all, the possibility of obtaining a filing date by disclosing only a description of the invention already existed, and this, without paying an official fee. The present decree therefore seems to institute a "new" alternative for patent applicants: to file a provisional patent application that can be regularized within twelve months.
Make no mistake about it, this provisional application can be very dangerous:
It is clear that the provisional application "à la française" is more dangerous than anything else and is of very limited value. Avoid it!
The second article of the decree creates a reciprocal of Article L. 612-15 insofar as it allows the utility certificate to be transformed into a patent. If the new provisions leave a period of 18 months to require transformation, this period is necessarily limited by the start of the technical preparations for publication, which appear to be the real deadline. The actual period to be considered to carry out the transformation would then be closer to 16 months. The underlying idea is to inform third parties about the regime and the length of protection of a title which, once published, can be opposed to them.
The criticism concerning foreign extensions of provisional applications can also be reiterated here. Nevertheless, this transformation procedure does not entail any risk for applicants regarding the drafting of claims.
Unlike the provisional patent application, which is deemed withdrawn when it is not brought into conformity, the utility certificate is published if the applicant has not been proactive in transforming or withdrawing the application.
If this provision allows one to feel remorse ("I should have filed a real patent application"), one may doubt its relevance. The only difference between a utility certificate and a patent is the research fee, which is €520 and even reduced to €260 for small applicants, which is a priori the preferred target of utility certificates.
Much Ado About Nothing.
 In particular, pursuant to Article 118 of Law No. 2019-486 of 22 May 2019 on the growth and transformation of companies, the following measures have been adopted
 The option of filing a provisional application in order to benefit from a filing date is not new insofar as it is provided for by the Patent Law Treaty (PLT) and codified in Article L.612-2 of the IPC.
 Research report commissioned by INPI from the EPO
 Article 9 of the Fees Regulations
 INPI Directives - Issuing procedure - MAJ May 2016 - page 113, specifies that the technical preparations take 6 weeks.
Decision of the Director of the INPI n°2011-714 relating to the technical preparations for the publication of patent applications