Among other changes to the French intellectual property system made by the so-called “PACTE” law (No. 2019-486 of May 22, 2019) is the reform of the utility model.
It may be recalled that a utility model is similar to a patent application but is not subjected to any prior art search or substantive examination by the patent office.The utility model is granted after a formal examination only, although its criteria for validity (in particular novelty and inventive step) are the same as for a patent.It confers the same rights as a patent (for 10 years rather than 20) but a prior art search must be requested from the French IP Office if the utility model is asserted in an infringement suit.
The utility model can thus be considered as a kind of patent of shorter term and for which examination is postponed until court proceedings are envisioned.
Under the PACTE law, the protection term for the utility model increases from 6 years to 10 years (IP Code L.611-2) as of January 10, 2020.
Decree No. 2020-15 of January 8, 2020 provides transitional measures for utility models pre-dating the law and which have not yet lapsed.
Payment of the 7th annuity for maintaining a utility model in force, made after the due date but within four months of the date of publication of the decree, is deemed to have been validly paid.It does not require any extra fee for late payment.
Payment of the 7th annuity more than four months after the date of publication of the decree may be made with an extra fee within six months from the day after the expiry of that four-month period.
Thus, utility models for which the 7th annuity is due at the end of January, February, March or April 2020 (i.e. UMs filed between January and April 2014) may be maintained in force without having to pay an extra fee even if the 7th annuity was paid late, provided the payment is made before May 11, 2020.Furthermore, if the May 11 time limit is missed, it is still possible to pay the 7th annuity with an extra fee until November 11, 2020.
Conversion into a patent application:
Hitherto it was impossible to convert a utility model application into a patent application (for example to extend its term).This is now possible for any utility model application filed as of January 11, 2020.
Decree No. 2020-15 of January 8, 2020 sets out the details for implementing this conversion.
The request to convert the utility model application into a patent application is to be made in writing at any time within a period of 18 months of filing the utility model application or of the priority date if priority was claimed and, in any case, before commencement of the technical preparations for the publication of the utility model application (IP Code R.612-53).
In practice, the conversion should thus be requested within 16 months of the filing date or priority date.
Moreover, the search report fee must be paid within a period of one month of reception of the conversion request.(IP Code R.612-54).
Valérie Vulliez is a French and European Patent Attorney with over 20 years experience in IP firms.She joined Santarelli in 2008.She advises and assists clients in the development of their patent portfolios and in their strategies for defending their rights.