20 years is almost a lifetime! A patent is undoubtedly the industrial property title that best protects your invention against counterfeiting, and enables you to control its use for the longest possible time. However, certain situations make the utility certificate a highly relevant alternative, which should be strengthened thanks to the Loi Pacte. Let’s take stock!
Short-term protection
The duration of a utility certificate is currently limited to 6 years, and will increase to 10 years once the Pact Law is passed, compared with 20 years for a patent. However, the protection afforded by this title is similar.
Like a patent, a utility certificate gives its holder the possibility of protecting himself in the event of counterfeiting. Obtaining this title gives you a definite and undeniable legal advantage.
The utility certificate offers several advantages.
Advantages of utility certificates
For inventions that are considered short-lived, i.e. those that will quickly become obsolete, 6 or 10 years of protection may be quite sufficient. Indeed, in extremely fast-moving technological fields, a utility certificate can sometimes be a wise choice. What’s more, a utility certificate costs less to file than a patent: there’s less formalism involved in filing, and there’s no examination by the INPI to analyze and respond to, so less work and fees for the patent attorney. What’s more, the INPI fee for a utility certificate is €13, compared with €273 for a patent, and since the validity period is shorter than for a patent, this also means that you pay fewer annual maintenance fees. In fact, to keep the industrial property title valid, you must pay the fees required by theINPI. But you may not want to pay for an obsolete invention.
From a practical point of view, the procedure for applying for a utility certificate is simpler than for a patent, since there is noexamination of patentability by the INPI! The INPI does not draw up a search report, so there is no obligation to respond to objections to the patentability of the invention. Even an invention that is neither new nor inventive can be granted a utility certificate. This search report must nevertheless be requested from the INPI if you wish to launch an infringement action against a competitor.
Read more: Can a software or application be patented?
Do I need to apply for a patent or utility certificate?
The most important difference between patents and utility certificates lies in their duration.
| Title | Duration |
| Certificate of utility | 10 years (previously 6 years) |
| Patent | 20 years |
Up until now, it has been strategically wiser to opt for the patent application procedure. Indeed, once a patent application has been filed, it can be converted into a utility certificate. Until now, the reverse has not been possible. But this is set to change with the entry into force of the PACTE law, which will allow conversion in the other direction too, i.e. from utility certificate to patent! The value of the utility certificate could also be strengthened if the Pacte law brings into force thestudy of the inventive step criterion for obtaining a patent, resulting in a much more complicated grant. The utility certificate option will make it possible to obtain a title issued on French soil for inventions that do not meet this criterion.
Information on the PACTE Act
The PACTE Act extends the validity of utility certificates from 6 to 10 years.
Utility certificate applications filed on or after January 11, 2020 can be converted into patent applications until technical preparations for publication have been made. This takes around 16 months from the date of filing. This patent application entails additional costs, including the preparation of a search report and a prior art search.
To choose between patent and utility certificate, to measure the level of protection and optimize the costs of your industrial property strategy, contact us!
However, patents offer longer-term protection and are often better valued, particularly by customers and investors, so why not opt directly for them? In any case, depending on the Examiner’s feedback and the points discussed with your patent attorney, you may end up opting for a utility certificate.
Choose according to your development objectives
Depending on your ambitions and your company’s business plan, your industrial property protection needs may vary. For example, if you want to expand internationally, we advise you to go through the PCT procedure. This is a formality that facilitates patent applications abroad. Similarly, if you wish to enter the European market, the so-called unitary patent, or European patent, should be considered!
To help you make the right choices, your industrial property attorney will advise you on the implications of each procedure.
