Conversion of a patent application

Conversion of a patent application is the operation by which an application filed in one form or before one office is converted into an application of another kind or falling under another office, while keeping its filing date and, where applicable, its priority. The mechanism exists in French law, between patent applications and utility certificate applications, and in the European Patent Convention (EPC), Article 135 of which governs the conversion of a European application into a national application. It makes it possible to rescue protection that the route originally chosen can no longer secure.

Conversion between patent and utility certificate

The applicant for a French patent may convert the application into an application for a utility certificate, a title granted without a search report and with a ten-year term. Since the PACTE Act, the reverse conversion is also available, a utility certificate application being convertible into a patent application within a period set by the legislation. This option allows the choice of title to be deferred, by first filing a less costly utility certificate application and then opting for a patent if the invention proves strategic. The provisional patent application follows a similar logic, since it may be converted into an ordinary patent application within twelve months.

Conversion of the European application

Article 135 EPC provides for the conversion of a European patent application into a national patent application in the designated States whose law so permits. The main case is that of an application filed with a national office which has not been forwarded to the EPO within the prescribed period, in particular because it concerns national defence, so that it is deemed withdrawn. The request for conversion is then filed with the national office where the application was filed, within three months. National laws may allow conversion in other cases where the application or the patent has been lost.

Effects and limits

The converted application keeps the filing date of the original application, but it is now subject to the regime of the destination title or office, in particular as regards fees, translations and examination requirements. Conversion does not cure substantive defects in the application and does not allow its content to be extended. The mechanism also exists in trade mark law, for an EU trade mark that has been refused, withdrawn or cancelled, under its own rules.

Key points

Conversion offers a fallback when the route of protection originally chosen closes or proves unsuitable, without loss of the filing date. Its time limits are short and its conditions depend on the law of the destination State. As soon as an application is at risk of being withdrawn or refused, it should be checked whether conversion is available, and the French title, patent or utility certificate, should be chosen according to the term of protection actually needed.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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