The French Utility Certificate in the spotlight

Share

On January 10, 2020 was published Decree No. 2020-15 implementing the “PACTE” legislation (Action Plan for Business Growth and Transformation) which recasts and strengthens the French Utility Certificate, thus offering an appealing alternative to patents and a genuinely attractive tool to protect inventions having a rather short life cycle on the market.

The prosecution of a Utility Certificate remains very easy and cheap, since it is not subject to any substantive examination by the French Patent Office.

Its term is however extended from 6 to 10 years starting from the filing of the application.

In addition, innovative companies are given some flexibility in their IP strategy, since the Utility Certificate can now be converted to a patent (thus offering a 20 year protection). This conversion may take place at any time within 18 months from its filing (or from a priority, if claimed) and before the technical preparations for publication have started (i.e. six weeks before the end of the 18 month period according to Decision No. 2011-714). Converting the Utility Certificate into a patent will further require requesting a search report within one month from the request for conversion.

The Utility Certificate should prove to be all the more attractive than the requirements for obtaining a patent are being concurrently tightened as of May 20, 2020, since patent applications filed after that date will be examined for inventive step. The Utility Certificate may thus be useful to protect poorly inventive innovations against infringement.

The owner of a Utility Certificate is entitled to the same rights as a patent owner, including the right to sue for infringement (provided a search report has been requested) and to extend the protection attached to this title abroad, during the year following its filing, for instance by filing an International (PCT) application. Contrary to a patent, the scope of a Utility Certificate may be adjusted until grant, by amending its scope in view of the products under development, in view of competitors’ products on the market or else to take possibly relevant prior art into account.

The only inconvenience we see in filing this title is for companies using patents as a marketing claim, insofar as a Utility Certificate is typically meaningless to a consumer, who more likely trusts a reference to a “patented product.”

Although it is likely not appropriate in these situations, the new version of the Utility Certificate could yet provide a valuable complement to a patent portfolio.

Emmanuelle RENARD

Find our lastest news

Leaders League rankings 2024

The Leaders League 2024 ranking has been released. We are so proud to be recognized as one of the Leading firms for Healthcare, Pharma and Biotech Patents in France.

29 July 2024

Learn more

European Patent Office (EPO) - Office Européen des Brevets (OEB)

G2/21: A landmark decision of the Enlarged Board of Appeal on “Plausibility”

To be or not to be plausible, that is no longer the question. On March 23, 2023, the Enlarged Board of Appeal of the European patent office (EPO) rendered its long awaited decision addressing the question as to whether relying on post-filing evidence should be accepted to support inventiveness of a claimed invention. Many examination […]

3 April 2023

Learn more

Leaders League rankings 2023

We are proud to inform you that Becker & Associés has been distinguished once again by Leaders League as one of the top leading French patent firms in the Chemistry-Biotech-Life Science areas.

28 March 2023

Learn more

The Unitary patent: revised calendar

For technical reasons, the Unified Patent Court (UPC) has decided to postpone the start of the “sunrise period” to March 1, 2023. During this period, owners of European patents and patent applications may opt out from the exclusive jurisdiction of the JUB (“opt-out”), before the agreement on the unified patent jurisdiction enters into force in June 1, […]

8 December 2022

Learn more

THE UNITARY PATENT AND THE UNIFIED PATENT COURT

The Unitary Patent (UP) and the Unified Patent Court (UPC) should come into force soon. The exact date is not certain, but should be end 2022 or early 2023. The Unitary Patent (UP) is a unique IP title which will allow for a protection in several member states of the European Union, with common validation and maintenance […]

26 April 2022

Learn more

Béatrice

September 4, 2021

Béatrice Tézier Herman has passed away so quickly, our pain is immense. A long-standing partner of the firm, Beatrice’s commitment and wisdom had been at the heart of the development and unity of our team. Your messages tell us about how an excellent professional she was, but also about her smile, her elegance, her serenity.

13 September 2021

Learn more

Discover all our news
Atomes 10

Contact






    If you would like more information, please do not hesitate to contact us. Please fill in the online form.

    Paris

    Cabinet Becker et Associés

    25 rue Louis Le Grand

    75002 Paris

    Métro : Opéra

    Parking : Opéra-Meyerbeer

    +33 (0)1 53 43 85 00

    Aix-en-Provence

    Cabinet Becker et Associés

    32 cours Mirabeau

    13100 Aix-en-Provence

    Parking : Mignet

    Social media & sharing icons powered by UltimatelySocial