In the field of intellectual property, the utility certificate (or utility model) is an interesting alternative to the traditional patent. Often misunderstood, this form of protection offers specific advantages that may be particularly suitable for certain situations. The purpose of this article is to explain the special features of utility certificates, their differences from patents, and their advantages and disadvantages.
Legal framework for utility certificates
The utility certificate is governed by the French Intellectual Property Code (IPC), in articles L. 611-1 et seq. It is an industrial property title which gives its holder an exclusive right to make use of an invention, similar to that conferred by a patent.
Contrary to popular belief, utility certificates must meet the same conditions of validity as patents. In fact, a utility certificate is one of the industrial property titles protecting inventions, as set out in article L. 611-2 of the IPC. To be eligible for protection, an invention must be novel, must involve an inventive step (non-obvious) and be susceptible of industrial application (useful).
Furthermore, from a formal point of view, applications for utility certificates and applications for patents must contain the same two essential requirements, i.e. a detailed description of the invention and claims. It is also advisable to add drawings.
However, utility certificates differ from patents by a faster and less costly grant procedure.
Major differences between utility certificates and patents
Term of Protection
One of the main differences between utility certificates and patents is the duration of protection. Whereas a patent grants protection for a maximum of 20 years, a utility certificate protects the invention for a maximum of 10 years, subject in both cases to the payment of annuities.
Grant procedure
The procedure for issuing a utility certificate is simpler than that for a patent. The examination of the application is limited to a formal check, without any in-depth examination of novelty or inventive step. No prior art search report is drawn up. And there is no opposition procedure for third parties.
Advantages of the utility certificate
Speed and cost
The main advantage of a utility certificate is the speed with which it can be issued and the low cost of the procedure. This solution is particularly suitable for SMEs or start-ups with limited resources that wish to protect their innovations quickly, or for inventions with a short commercial life or for incremental innovations.
Suitable for minor innovations
The utility certificate is particularly well suited to inventions that might not stand up to a thorough examination of the patentability criteria. It therefore offers an alternative to patents, making it possible to protect minor innovations or technical improvements that would not justify the costs and delays associated with a patent application.
Flexibility
One of the advantages of the utility certificate, since the reform of the PACTE law (see our article here), is that the initial application can be converted into a patent application, right up to the start of the technical preparations for publication (the reverse is also true).
Intellectual property strategy
The utility certificate can be used as a strategic tool in an overall intellectual property policy. For example, it enables an invention to be protected quickly as a precautionary measure, while waiting to decide whether a patent application is justified. This approach may save time and postpone more substantial investments associated to a patent application. It also enables inventors to benefit from legal protection more quickly, which can be crucial in sectors where there are high levels of innovation. And the fact that the utility certificate is an official industrial property title means that it can also act as a deterrent to third parties.
Disadvantages of the utility certificate
Limited term of protection
The limited protection period of 10 years can be a disadvantage for certain inventions that are strategic for a company, or more obviously for inventions with a relatively long commercial life.
Disputes and challenges
Because there is no in-depth examination of the novelty and inventive step criteria, utility certificates can be more easily challenged by third parties. More importantly, the utility certificate cannot be used as a basis for an infringement action against third parties without first requiring a search report to be issued. In other words, the advantage of not having a search report at the grant stage becomes a disadvantage when considering an infringement action. Companies therefore need to anticipate the defence of their rights in the event of a dispute and assess the value of their rights carefully before acting against third parties.
Less prestige
Utility certificates are often perceived as less prestigious than patents. In fact, patents and utility certificates do not have the same legal value. And this difference in legal value can have an impact on the economic value of each of these titles. This difference in perception can influence commercial partnerships or negotiations with investors, who will tend to place more value on a traditional patent than on a utility certificate.
Conclusion
The utility certificate is an interesting alternative to the traditional patent, offering rapid and cost-effective protection for minor innovations or technical improvements. Although its term of protection is limited and it may be perceived as less prestigious or legally weaker, it offers significant advantages for companies wishing to quickly secure their industrial property portfolio. They must therefore carefully assess the relevance of a utility certificate in relation to the nature of their invention and their commercial strategy. In any event, utility certificates should be seen as a complementary tool in an invention protection strategy.
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