A patent application can be made by one or more natural or legal persons, with or without an agent (e.g., a qualified lawyer, patent attorney, or any other authorised person). The applicant is considered the owner of the application. If there are several applicants, the use of an agent is mandatory.
If the inventor is an employee, Article L611-7 et seq. provides for a specific regime for employee inventions which proposes a distinction between attributable/non-attributable creations on assignment and off an assignment. Depending on the context, the invention belongs either to the employer or to the employee, with potentially an attribution or licensing right for the employer and financial consideration for the employee. The creative environment and its consequences must therefore be well defined in employment contracts. Finally, it should be noted that since a recent ordinance of 15 December 2021, inventions made by trainees or doctoral students within the company (or the administration) are also vested in the employer, under conditions laid down by law.
It is recommended to file as soon as possible, as the filing date will become the starting date of the protection. Otherwise, several options are possible:
- Keeping the secret without securing the creation, which is not recommended given the novelty criterion.
- Frame the secrecy with non-disclosure agreements, while dating the creation and its refinement/improvement phases with a certificate of anteriority, such as Copyright.eu certificates, to maximise confidentiality and deterrence before a potential patent application. Also, Copyright.eu certificates enable to benefit from the right of prior personal possession (L.613-7 of the IPC). See here for more information: The right of prior personal possession.
- Obtaining a Certificate of Utility, which is a property title issued by the French INPI, similar to a patent. The protection lasts for 10 years. The examination does not involve prior inventions checking, and the Certificate of Utility application can be converted into a patent application at any time up to the publication preparations.
- Filing a provisional patent application, which can be upgraded to a classic application within 12 months or transformed into a utility certificate.
A patent application is very formal, and it is strongly recommended that you seek assistance in drafting it as it requires specialised legal and technical skills. Indeed, it is necessary to describe the invention, the claims, and provide details concerning the inventor.
After filing, the French INPI will examine the application and search for prior rights. The Institute may refuse the application for lack of formalism or if it detects a relevant prior invention.
After examination, the application is published in the national register, thus opening a 3-month opposition period during which third parties can oppose the filing. At the end of this period, if all goes well, the patent is registered provided that the applicant pays a fee. The patent is granted by the INPI, and the registration is published.
