The PACTE Act has brought its share of changes to industrial property, and in particular impacted the utility certificate. Since January 10, 2020, this industrial property title now confers 10 years’ protection (rather than 6 years), and thus comes a little closer to its big brother the patent in terms of duration, although its content remains unexamined by theINPI.
What are the advantages and disadvantages of this industrial property title?
The interests and advantages of utility certificates :
Obtaining full industrial property title
The utility certificate is a title issued by the Institut National de la Propriété Industrielle (INPI) which, like the patent, gives a monopoly on the exploitation of an invention.
Like a patent, this title confers a right to prohibit exploitation by third parties, and if you do not wish to exploit the covered invention yourself, you can assign or license your utility certificate, either free of charge or for a fee.
This grant of a title is the major difference with the provisional patent application. The provisional patent application has been available since July1, 2020, and has a similar formalism to the utility certificate.A provisional patent, on the other hand, has a maximum lifespan of 12 months, and its sole purpose is to be transformed into a classic patent (in which case its lifespan becomes that of a classic patent, i.e. 20 years) or to serve as a priority for a second patent application.
The utility certificate is valid for 10 years, subject to payment of the annual maintenance fee (from €139 including INPI taxes).
A text similar to the patent text
Although it is not examined, it is preferable that the text of a Utility Certificate application be as complete, in terms of description and claims, as that of a patent, in order to cover the invention as fully as possible. It should therefore adopt the same technical formalism and layout.
This necessity is justified by the possibility given to the applicant to transform his utility certificate application into a patent application, since the text filed and transformed cannot be modified.
At YesMyPatent, we keep in mind that any certificate application can potentially be transformed into a patent application, and we strive to write the most complete utility certificate application text possible with this in mind. If your strategy so requires, you can apply for a conventional patent.
A title issued without examination, resulting in lower costs
The patent application is examined by INPI to verify that the conditions of novelty and inventive step are met. This INPI examination, which takes the form of a Search Report and a written opinion from the examiner sent around 10 months after filing, is not necessary to obtain a utility certificate. Utility certificates are issued automatically after a formal examination.
This saves the cost of the search for the search report, i.e. €520 or €260 at a reduced rate, as well as the firm’s fees for analyzing the examiner’s opinion and preparing the response.
The utility certificate is generally issued a few months after publication, i.e. around 20 months after the utility certificate application is filed.
We advise you to carry out a patentability studybefore drafting a utility certificate. This study will enable you to check that your invention is indeed new and inventive, and will guide you towards the right choice of industrial property title.
Title convertible into patent up to 16 months after filing
If your need for protection changes, it is possible to convert your utility certificate application into a patent application within 16 months of the filing date of your certificate. You will then have to pay the search fee (amount mentioned above) to initiate the preliminary search report discussed above, which is indispensable for the examination of your patent application.
If you convert your utility certificate into a patent application, you retain the filing date of the day on which you filed your utility certificate.
A real marketing asset
Although the term “Certificat d’Utilité” is less meaningful than “Brevet déposé” or “Brevet délivré”, the Certificat d’Utilité is an industrial property title registered with the INPI, and still has undeniable marketing advantages.
On the one hand, you officially have until publication of your application to carry out your proof of concept, study your market, disclose, or even commercialize, before if need be transforming your utility certificate into a patent application and dealing with the “Examination” part.
On the other hand, if you don’t identify the need for this transformation, you can keep your utility certificate, paying only annual fees to keep it in force.
Right to prohibit – Infringement action possible
As indicated above, the utility certificate confers a right to prohibit, and you can therefore sue a competitor for infringement on the basis of it. To bring an infringement action with your utility certificate, however, you will need to pay the INPI search fee and wait for the Search Report to be issued.
In the event of a positive ruling, thisinfringement action will enable you to obtain the cessation of a competitor’s acts of infringement, as well as damages.
Duration of protection generally adapted to the product’s lifespan
A study has shown that, although the maximum term of protection for a patent is 20 years, the average patent is abandoned after 7 years, for financial and/or non-exploitation reasons – and thus falls into the public domain. The 10-year protection period of a utility certificate is therefore fully in line with this statistic, and seems sufficient to protect most inventions (with the exception of pharmaceuticals ). It may therefore be financially more attractive to use a utility certificate with its 10-year term of protection.
International extension possible through an international patent application
The French utility certificate is not an obstacle to the international extension of patent protection for your invention. This title is considered as a “patent” (in the sense of priority) in international procedures, notably for a PCT application, which will enable you to recover the benefit of the filing date of your utility certificate as the effective date of your PCT filing (for common elements).
It is therefore perfectly possible to proceed with a PCT application on the basis of your utility certificate (in the form of a PCT patent application) if your strategy includes an international component.
Please note that the international extension of a utility certificate must be carried out within the same timeframe as for a patent, i.e. within 12 months of filing, this timeframe being non-extendable.
A publication in the state of the art
The utility certificate, as a title published at 18 months, becomes accessible to the public and can be found in patent databases. It will therefore be taken into account when examining your competitors’ subsequent patent applications on the same subjects.
Utility certificates are widely used abroad, particularly in China, where they are less restrictive than patents in terms of the conditions for obtaining them, and provide protection for innovation. This helps to make the country competitive in various technical fields, or at least to make life more difficult for foreign competitors.
A fallback solution after the entry into force of the inventive step for obtaining a patent in France
Recently, inventive step has become an indispensable criterion for the granting of French patents, making it much more difficult to obtain them.
Read more: Filing for a patent, the arrival of the inventive step criterion
As mentioned above, utility certificates are not examined, so this criterion does not prevent them from being issued.This title therefore represents a fallback solution, when you have doubts about the inventiveness of your product, or when you have had a patentability study carried out on your invention and it is new but does not appear to be very inventive.
Comparative table of different titles:
patent, provisional patent, fee-free provisional patent and utility certificate
| Patent | Provisional patent application | Fee-free provisional patent | Certificate of utility | |
|---|---|---|---|---|
| Maximum service life | 20 years (subject to annuity payments) | 12 months | A few months (12-month priority right) | 10 years (subject to annuity payment) |
| Compulsory taxes* (in euros) | On filing: Filing fee: €13 + Search fee: €260 On issue: Issue fee: €45 Each year + Annual maintenance fee (progressive annual amount from €38 or €19** up to €790) | On filing: Filing fee: €13 Within 12 months of filing for conversion : Compliance/search fee: €520 or €260** Each year if converted: Annual maintenance fee (progressive annual amount from €19 to €790) | No fee, but new patent application must be filed within 12 months | On filing: Filing fee: €13 On issue: Issue fee: €45 Each year: + Annual maintenance fee (progressive annual amount ranging from €38 or €19** up to €220) |
| Application review | Yes | Yes, once the request has been complied with | No | No |
| To obtain a test | Transformation into a regular patent application within 12 months | Filing a new patent application | Transform into a regular patent application or payment of a €260 search fee and search report. | |
| Obtaining an industrial property title | Yes | No | No | Yes |
| Infringement suit | Yes | No | No | Yes, subject to payment of the research tax and submission of a 260€ research report. |
| Publication of the content at 18 months, allowing the invention to become prior art for all subsequent applications for title. | Yes | Only if the application is compliant | No | Yes |
| International extension under priority for this type of request | Yes | Yes | Yes | Yes |
*Excluding patent attorney’s fees
** A 50% reduction on the main procedural fees is granted:
- To individuals
- Companies with fewer than 1,000 employees whose capital is not held by an entity that does not meet these first conditions.
- Non-profit organizations (NPOs) in the education and research sector
