June 17, 2020

A New Provision in the French Patent Landscape: Provisional Patent Application

HMC-IP attorney Laurence Bibow provides a summary of the new provisional patent application provisions available from 1st July 2020 before INPI in France. Laurence Bibow is a French national and an experienced European and Irish Patent Attorney who is presently based in France.

Filing of the provisional application is made simple:

A provisional application may be filed with only a description and drawings, a filing fee, and a request for provisional application. The formal requirement is however a docx document, so any other type of documents should be simply converted into docx. Similarly to filing a regular patent application, a provisional may be filed in a foreign language, provided a translation into French is later filed.

At the filing of the provisional application, there is hence no requirement of filing either claims, abstract, or translation, nor paying the official search fee. All these are however required if the applicant wants to bring the provisional application into compliance and obtain a regular patent application.

Bringing into compliance

The Applicant needs to file a request for bringing the provisional application into compliance and complete the filing with claims, abstract, and translation if needed, as well as paying the search fee. This can be made at any time 12 months after the filing of the provisional.

The application is then treated as a regular French patent application:

  • Examination of the application starts, and a Search Report will issue 8-9 months after the compliance request.
  • Publication occurs 18 months after the filing of the provisional application, with the Search Report if already available at that stage.

A provisional patent application may also be converted into a utility certificate within the 12 months period.

Unless the applicant requests that the provisional application be turned into a regular patent application, the provisional application is deemed withdrawn 12 months after its filing and will not be published.

Founding priority rights

The filing of a provisional application establishes a priority right for the Applicant. Within 12 months of the filing of a provisional application, the applicant may file under priority:

  • national patent applications - which may be a French patent provisional or regular application,
  • regional patent applications (for example at the EPO), and/or
  • an international PCT application.

Possible scenarios after filing of a provisional

From a first provisional application, the applicant may, as they see fit:

  • do nothing! The first provisional will be deemed withdrawn 12 months after its filing, without publication, and without leaving any rights outstanding;
  • bring the provisional into compliance within 12 months of its filing and convert into a regular French patent application, published after 18 months of the provisional filing, and following a regular examination process;
  • file a regular (national, regional, or international) application under priority of the first provisional within 12 months of the provisional filing without converting it into a regular application - the first provisional will be deemed withdrawn but published with the regular application;
  • file a second provisional application under priority of the first provisional application. Within 12 months of filing of the first application, the second provisional may be brought into compliance or used for filing a new application under priority, in which cases both first and second provisional applications will be published. The first provisional will be deemed withdrawn.

Caution – Pitfalls to be avoided

As the examination starts only after the compliance request, the Search Report may be received long after the end of the priority year and even after the publication of the application: therefore, the applicant may not know if any relevant prior art exists before filing abroad.

The description of the provisional application must be complete. No new materials may be added in the application at a later stage.

Filing a subsequent regular patent application under priority of a provisional application rather than simply converting the provisional brings the advantage that new materials may be added to the subsequent application. The filing date of the subsequent application will however be taken into account for assessing the patentability of the new materials.

Miscellaneous

A provisional application will be examined for Defence requirement at filing, as a regular French patent application.

The provision will enter into force on 1st July 2020.

Contact the author Laurence Bibow or your usual HMC-IP attorney for further advice.

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