> ARE INDUSTRIAL PROPERTY ATTORNEYS BOUND BY THE OBLIGATION OF PROFESSIONAL SECRECY?
Industrial property attorneys are bound by professional secrecy, which is one of the profession’s main ethical obligations.
In our profession, the obligation of professional secrecy is regulated by the Industrial Property Code (Articles L.422-11 and R.422-54), the Penal Code (Articles 226-13 and 434-1), and the CNCPI’s Internal Bylaws (Articles 12.1, 12.3, and 15.7).
Violations of the obligation of professional secrecy are heavily sanctioned.
> WHAT IS THE ROLE OF INTELLECTUAL PROPERTY IN A COMPANY’S BUSINESS STRATEGY?
For companies, intellectual property is an instrument of conquest and communication. An integrated IP policy is an important tool that can be used to defend market shares and conquer new markets. It also helps to promote the image that your company wishes to reflect.
Intellectual property rights serve to:
- protect the rights of inventors and innovative companies;
- give all economic operators the means to increase market share;
- discourage competitors from filing formal proceedings (IP titles are often a sufficient deterrent).
At the international level, intellectual property titles are a strategic means of competition. They provide companies with the legal means to curb competitors by limiting their operating freedom, placing them in a situation of dependency or, in extreme cases, excluding them from the market altogether. This is the reason why leading countries, as well as those that are commercially aggressive, are so mindful of and involved in IP matters.
Company can reap significant benefits, both in terms of profit and image.
> WHAT IS A PATENT?
A patent confers upon the holder an exclusive right to exploit an invention. Exploitation primarily refers to the manufacture and importation of a patented product, or its use if the invention is a process or method. Other activities (holding/offering the product for sale or selling/using the product) are prohibited under certain circumstances.
On the other hand, a patent does not guarantee its holder the freedom to exploit the claimed concept unilaterally, because this concept may be covered by a prior (more general) patent, or because the object whose manufacture is envisioned may incorporate another concept patented by a third party.
An invention may be a product (machine, medicine, communications system, etc.), a method (method of detection, product manufacturing procedure, etc.), or an application to be used in any technological field.
To obtain a patent, it is necessary to file a patent application with a patent office.
Patents are issued for inventions that are
– susceptible of industrial application,
– new, and
A patent only grants monopoly within a given national territory. To obtain protection in multiple countries, it is necessary to file a patent application in each of the countries concerned. However, in certain cases, it is possible to obtain patents for a group of countries using a single procedure (particularly in Europe).
> WHO CAN FILE A PATENT APPLICATION?
In principle, anyone can file a patent application:
- Natural persons: private individuals, artisans and tradespeople who have sole proprietorship of their businesses, those who are self-employed, etc.
- Legal Persons: SMEs, start-ups, large industrial groups, associations, public institutions, universities, etc.
- Patents may also have joint owners.
> WHAT IS THE LIFESPAN OF A PATENT?
In principle, a patent has a maximum life of 20 years from its filing date. Patents are also subject to annual maintenance fees.
> WHAT CAN I PATENT?
Almost any technical solution to a technical problem is patentable.
The solution must be new and innovative.
It is advisable to consider aspects related to business strategy such as:
– the market and your competition,
– the creation of a coherent patent portfolio,
– your commercial and marketing strategy.
Our associates would be happy to advise you on any of these topics.
> WHEN SHOULD A PATENT APPLICATION BE FILED?
It is imperative that you file a patent application before any type of disclosure, whether written or oral (including disclosures during conferences, commercialization, advertising, etc.).
Our consultants will be happy to answer any of your questions concerning this key point.
> WHY SHOULD A PATENT APPLICATION BE FILED?
– To dissuade a competitor from copying a product within a given territory,
– To challenge a competitor who copies a product within a given territory,
– To “sell” licenses,
– To strengthen the company’s position in the event of a dispute and to better obtain advantageous deals,
– To promote the company’s innovation vis-à-vis the public,
– To promote the company’s innovation vis-à-vis investors,
– To create a corporate asset.
> WHAT ARE THE COSTS ASSOCIATED WITH FILING A PATENT APPLICATION?
We will establish a quote for you during our initial consultation, which is free of charge and obligation. You are free to accept or decline our offer. The amount of the quote depends on the technical complexity and the scope of the patent in question.
> WHAT ARE THE MAJOR STEPS?
You may want to submit your first filing in France. This option makes it possible to limit your initial financial commitment, while establishing a filing date. At this stage, we are talking about submitting a patent application.
Approximately nine months from the effective filing date (i.e., the priority date), a Preliminary Search Report is issued by the INPI. This report records the results of a document search relative to your patent application. It is used to determine the “innovative” aspect of your invention (i.e., its patentability). Depending on the results of this report, it may be necessary to take action. If the invention is found to be patentable, the patent may be granted.
Within 12 months from the date of the first filing, you may extend your protection abroad, (i.e., file one or more patent applications in other countries). Each extension of this type will be independently reviewed to determine the invention’s patentability.
> I WOULD LIKE TO BETTER UNDERSTAND THE PATENT PROCEDURE. WHO CAN I CONTACT?
We can come to your company to provide on-site training on various topics (steps in the patent process, industrial property awareness, software patents, etc.).
Please do not hesitate to ask us for a personalized service quote.
A new European patent with a unitary effect, commonly known as a “unitary patent,” is on the horizon.
What will not change:
the procedures outlined by the European Patent Convention (EPC) will remain unchanged. An approval in the form of a unitary patent may follow the issuance of a traditional European patent approved following the European Patent Office’s centralized grant procedure.
What will change:
– first, the cost involved, since the payment of a “unitary” maintenance annuity in the European Union Member States was ratified in the Agreement on a Unified Patent Court.
– Second, a Unified Patent Court (UPC) will be created. Therefore, the UPC will have exclusive competence over issues concerning European patent infringement, validity, and related sanctions involving UPC agreement signatory countries. This will give the new body supranational competence over patents.
Derogation from the UPC’s exclusive competence will be possible during a transitional period by filing an opt-out request. In such cases, the granted European patent will remain under the jurisdiction of national courts.
Our team would be happy to answer your questions or otherwise advise you on this matter.
THE IDENTITY OF YOUR PRODUCTS AND SERVICES
> WHAT IS A TRADEMARK?
Your company may have a number of distinguishing symbols, but its trademark constitutes the most indispensable element of your industrial and commercial strategy. It helps to rally customers and serves to identify and differentiate your products and services from those of competitors. Trademarks provide consumers with information and a sense of security. They serve as a guarantee of origin.
Trademarks come in many forms. They may consist of a word, a name, a slogan, numbers, letters, a design, or a logo.
As of the filing date, a trademark confers a monopoly over its use to identify the products and/or services covered for a period of 10 years (renewable indefinitely).
> WHY SHOULD I FILE A TRADEMARK APPLICATION?
– To capitalize on your efforts to promote your name and image;
– To have access to repressive measures in the event of trademark infringement;
– To strengthen your company’s position in the event of settlement negotiations;
– To deter third parties from trademark infringement or free-riding within a given territory;
– To promote your trademark via license agreements;
– To create an intangible corporate asset
for a modest cost in light of the advantages.
> UNDER WHAT CONDITIONS CAN I FILE A TRADEMARK APPLICATION?
For a trademark to be legally valid, it must meet certain legal criteria:
– It must have a distinctive character, i.e., it should not characterize the product or service concerned, or describe one of its characteristics;
– It must not be deceptive or misdescriptive, i.e., it must not mislead consumers as to the nature, characteristics, or origin of the product or service concerned;
– It must be available, i.e., it must not infringe upon previously acquired third-party rights.
The prior art search that we propose (referred to as an identical or similar trademark search) enables us to identify identical or similar trademarks already registered, not only in France but also abroad. It is strongly recommended in order to prevent potential challenges to your trademark application or rights of exploitation.
> WHAT STEPS ARE INVOLVED IN REGISTERING A TRADEMARK?
A trademark application is filed for a list of products and services and then examined by the office of the country concerned (the INPI in France).
Notifications of irregularity or a lack of distinctiveness may be issued by the Examiner. If this is the case, the issue must be remedied.
The application is then published, launching the opposition period (during which any third party with prior rights may oppose the registration of the trademark).
Once this period has expired or the opposition has been overcome, the office may register the trademark.
> AT WHAT LEVEL SHOULD I REGISTER MY TRADEMARK (NATIONALLY, IN EUROPE, OR INTERNATIONALLY)?
You can register your trademark in several territories:
– In France: file your application with the National Institute of Industrial Property (INPI);
– In the European Union: file a single application with the European Union Intellectual Property Office (EUIPO) to apply for a unitary title covering the entire EU;
– International procedure: file a single application via the “Madrid System” to apply for protection in numerous countries throughout the world;
– National filings abroad: file your application with the appropriate office (Canada, Brazil, India, etc.).
The holder of a trademark has a period of 6 months from the first filing to apply abroad and benefit from the initial filing date (right of priority).
> WHAT ARE INDUSTRIAL DESIGNS?
Rights pertaining to patterns (two dimensions) and designs (three dimensions) protect the appearance of a product or part of a product (i.e., its shape, texture, ornamentation, or aesthetics).
As soon as it is deposited at the office of your choice, a design gives you a five-year monopoly renewable four times, for a maximum duration of 25 years throughout the French territory.
> WHY SHOULD I FILE AN INDUSTRIAL DESIGN APPLICATION?
– To benefit from a title and a presumption of ownership in case of litigation. This facilitates infringement proceedings and enables customs to stop and seize counterfeit designs;
– To capitalize on your efforts to promote your products, their image, and your image;
– To have access to repressive measures in the event of trademark infringement;
– To strengthen your company’s position in the event of settlement negotiations;
– To deter third parties from product counterfeiting or free-riding within a given territory;
– To promote your design or pattern via license agreements;
– To create an intangible corporate asset.
NOTE: If your product includes a new technical function, a patent must be filed beforehand to protect it. Industrial design rights only protect the appearance of the product, insofar as its appearance is not dictated by its function.
> UNDER WHAT CONDITIONS CAN I FILE AN INDUSTRIAL DESIGN APPLICATION?
The industrial design must:
– be new, i.e., it must not be identical or almost identical to any industrial design disclosed before the date of your deposit;
– have its own unique character, i.e., the overall impression it produces on the informed user must differ from that produced by any other creation previously disclosed.
> WHAT STEPS ARE INVOLVED IN REGISTERING AN INDUSTRIAL DESIGN?
The application for the registration of an industrial design is filed and then subject to a formal examination by the office concerned (the INPI in France or the EUIPO at the European Union level). The office assigns a date and number at the time of deposit.
The examiner may issue irregularity notifications that must be remedied.
The office publishes the registration with reproductions of the industrial design, approves its registration, and a certificate of registration is issued for the country or countries concerned.
> WHY DEPOSIT AN INDUSTRIAL DESIGN AT THE EU LEVEL?
At the EU level, the form of your creations is protected via a single deposit with the EUIPO. The latter covers European Union Member States and is a supranational body, which simplifies any subsequent actions that you may take.
A COMPANY’S INTERNET ADDRESS
> WHAT IS A DOMAIN NAME?
A domain name is an electronic address used to locate a site on the web.
A domain name does not have to be distinctive in order to be registered, but it must not infringe upon the rights of a third party.
Before reserving a domain name, an availability search must first be performed not only among other Internet domain names but also among other rights (trademarks, corporate names, trade names, banners, etc.).
An availability check and a quick reservation are recommended, due to the “first come, first served” principle.
Many generic (.com, .net, .org, etc.) or territorial (.fr, .eu, etc.) extensions are available depending on your project.
> WHY SHOULD I SEEK ASSISTANCE IN REGISTERING MY DOMAIN NAME?
– To assist you in your selection, search availability, and reserve your domain name;
– To ensure the sustainability of your website and safeguard it from free-riding;
– To guarantee the integrity of your rights, which are more difficult to enforce than those involved in trademark law;
– To protect your domain name once it is reserved, via a monitoring service to inform you of reservations of identical/similar domain names and those of potential competitors;
– To ensure the renewal of your registration;
– To reap the benefits of a well-rounded portfolio.
> WHAT ARE THE BENEFITS OF TECHNOLOGICAL, ECONOMIC, AND LEGAL WATCHES?
Searches and inquiries (generally online database searches) are carried out to analyze the industrial property rights of a particular company or individual. They are conducted periodically or at regular intervals.
Such analyses, which are carried out confidentially, make it possible to determine:
– The freedom to exploit a technology or brand;
– The results of research and development, as well as the state of a company’s patent and/or trademark portfolio;
– Market evolution;
– The state-of-the-art in the field concerned.
> WHAT IS THE PURPOSE OF INDUSTRIAL PROPERTY AGREEMENTS?
Such agreements provide legal and economic security by specifying the rights and obligations of each party and serve as a tool for structuring the undertakings of each party.
> WHAT ARE THE VARIOUS TYPES OF AGREEMENTS?
– Licenses, Exclusive and Non-Exclusive;
– Collaboration Agreements;
– Consortium Agreements;
– Joint Patent Ownership Agreements;
– Non-Disclosure Agreements;
> WHAT IS A LICENSE?
A license agreement is a contract by which the holder of an industrial property right (patent, trademark, or industrial design) grants to a third party, in whole or in part, the right to exploit said IP right, in exchange for compensation, within a given territory.
> WHAT IS AN ASSIGNMENT?
An assignment agreement is a contract by which the assignor transfers the ownership of his industrial property right to the assignee at a price determined by the parties.
> WHAT IS A COLLABORATION AGREEMENT?
A collaboration agreement is a contract by which several persons divide the execution and financing of scientific and technical works in order to achieve certain objectives.
A collaboration agreement is the preferred instrument for carrying out research whose stakes are important in terms of valorization.
It outlines how financial, human, technical, and logistical resources are to be pooled. Resource accounting makes it possible to quantify the participation of each partner and to forecast the distribution of intellectual property rights and the conditions of their exploitation.
> WHAT IS A CONSORTIUM AGREEMENT?
A consortium agreement is a contract by which partners from different backgrounds agree to participate in a collaborative research and development project, generally funded partly by public funds. Such an agreement outlines:
– the project governance framework (decision-making bodies and rules),
– the obligations of each partner, in terms of inputs and results,
– the intellectual property rights of each party,
– the rules of ownership/exploitation of the innovations created within the framework of the project.
Such agreements, which can bring together a large number of partners (who generally have complementary interests) typically include many clauses.
> WHAT IS A JOINT PATENT OWNERSHIP AGREEMENT?
A joint patent ownership agreement is a convention by which partners who have chosen to share patent ownership (as a result of their joint research) establish their respective rights and obligations.
As joint patent ownership is not regulated by public policy, the parties can agree on measures that suit them, which gives them a great deal of freedom in drafting the agreement.
> WHAT IS A NON-DISCLOSURE AGREEMENT?
A non-disclosure agreement is a contract by which the partners govern the confidentiality of information exchanged between them.
Such agreements make take several forms:
– non-disclosure agreements for the transmission of confidential information,
– non-disclosure agreements for the reception of confidential information,
– mutual non-disclosure agreements for the exchange of confidential information.
Non-disclosure agreements must therefore precisely define information covered by the obligation of confidentiality and information excluded from it, outline authorized and prohibited disclosures, and set the duration of the agreement.