#IPLaw #PatLaw – Disadvantages of the new mandatory online filing of patent applications before the French Patent Office (INPI)

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Following the filing of the French trademarks and the filing of French designs, the General Director of the French Patent Office issued a decision on last November 8, concerning the filing of French patent applications and other national proceedings to be made exclusively online, with effect from November 19, 2018.

Previously, it was possible to file a patent application by hand, post, fax or filing software (epoline) common with several offices in Europe and with the European Patent Office. Since last November 19, these other means of filing are no longer allowed.

An INPI portal has been in operation for a very long time, and has been updated following objections. Indeed, schematically, the portal system looks for the term “description” in the text of the application to identify the description part, and does the same for the claims, the abstract, and the figures that should normally be integrated in the same file in docx format.

Following this, the system converts the deposited file into an “enrich” docx file with specific tags. The result is a change in the font, margins, character sizes and font, line numbers converted to paragraph numbers, and initial claim numbers (“1.”) are modified to (“[Claim 1] “). The system then generates a downloadable pdf file corresponding to the docx.

Thus, apart from the sequence of letters, the file of the pending application before the INPI no longer has any aspect in common with the file that the applicant has introduced on the system. It becomes difficult to refer to the application as filed, or to a co-pending application that should have been identical. Similarly in the context of a modification of the claims, for the practitioner, only the initial file in docx is available but it does not correspond, in the form, to the pending set of claims.

The removal of the other means of filing and the obbligaion to go through the portal INPI has, from the beginning, raised problems of form / cosmetic text, as well as practical problems from the point of view of the practitioner.

Most pratitians each have their uses in terms of fonts, formatting including paragraphs. The removal of the old filing means forces everyone to have a pending application to the INPI having exactly the same form and a relatively large font size delta between the title and the body.

Beyond the impersonalization of the texts of the French patent applications, come practical disadvantages when the practitioner wants to refer to the application as filed or the pending application, the relevant mentions are no longer in the same place. The same is true when one wishes to make modifications similar to those of a co-pending application, or to modify the claims during the procedure. Indeed, the pending application before the INPI is not available in editable format and the practitioner will use the initial file with the variations of positions.

What about documents filed in foreign languages? For example, can a French application under Chinese priority, for which instructions are given on the last day of the priority period, be recognized by the INPI portal system?

As for references numbers, it would be necessary to systematize the use of paragraph numbers, but it is possible that an empty paragraph could be considered by the portal system as a new paragraph where the practitioner would not have associated any number, which can generate specific shifts.

After objections the portal has been modified. The main novelties that were deemed sufficient to close the debate were the establishment of a fallback procedure and the possibility of paying the fees after the initial filing. Thus, a docx file that the system could not convert can be filed as is in its pdf form in the fallback procedure, the burden is for the applicant or the practitioner to file a compliant file within two months.

These changes are still not fully satisfactory. The impersonalization of the texts remains, as well as the practical disadvantages. Tests show that the filing of a Chinese docx makes it possible to do the fallback procedure. The regularization of the docx and the translation of the Chinese text of the application into French seems to have to be done within the same period of 2 months from the filing.

The main problem that remains to date concerns the case where the practitioner receives instructions of filing a French application under foreign priority with a document in pdf on the last day, without any docx document available for example due to jet lag. Indeed, in this case, the system hangs and does not accept the pdf because it is required to file first a docx could that not be converted, and then a pdf that exactly matches the docx … The risk of loss priority is therefore important with the subsequent consequences in terms of the validity of the patent application.

By way of comparison, online filing at the European Patent Office (EPO), the UK Office (UKIPO) and the German Office (DPMA) do not, to our knowledge, have this type of disadvantages.

The INPI portal therefore needs some additional developments to limit the aesthetic, practical and substantive disadvantages.

SOTERYAH IP

#PatLaw – The employer has disclosed an invention that would have worth millions

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One more or less uniform paradigm in various jurisdictions, is that the invention of the employee belongs, because of the employment contract, to the employer. Some specificities may exist in certain jurisdictions but the principle is generally this one.

Under French law, schematically, when the inventor had an inventive mission, the employer must give him an “additional remuneration” which must be proportionate in the light of the commercial success of the invention. When the inventor did not have an inventive mission, but realized the invention in the field of the company, the situation is generally equivalent.

But what happens in a case where the ivention is published without having filed any application?
Indeed, the fruit of an invention is really substantial only in the case of the sale of an industrial property title implying a monopoly.

This is the situation in which Jean-Michel Lerussé, a former employee of the Kéolis group in charge of the subway of Rennes (FR), found himself.

Mr. Lerussé was hired by the Keolis group in 2002, when the first subway line for Rennes was commissioned. He spent long hours cleaning the subways by hand with water jets, a brush, a bucket of water and soap. This represented nearly 1,000 hours of work and 60% of their activity. Washing was used to limit accumulations of graphite that could cause serious short circuits.

Tired of these tedious operations, this former mechanic, after working nights, designed and built a water jet cleaning machine with washing bars and high-pressure nozzles on a maintenance train.

Mr Lerussé consideres today that the Keolis Group has never acknowledged his work and has removed any chance of being protected by making a public disclosure of the invention. As a consequence of this, a filing of a patent application is no longer possible, and Mr. Lerussé can not claim any additional remuneration on this basis.

In this type of situation, it is possible to pursue remedies on the basis of the general law on responsibility. It must be established that there was a fault, a damage and a causal link relating to them.

In the case in point, Mr Lerussé states that:

– in 2002, the agents could clean 3,643 m of lanes in 30 nights and that amounted to € 5.22 per meter;

– in 2016, thanks to his invention, they could clean 46,432 m in 53 nights and it came back to € 0.67 per meter.

This allowed Keolis to save 87% on maintenance.

This saving can be determined in terms of income for the patent holder for example on the basis of royalties from almost all metro maintenance companies in the world.

It is an income from which Mr. Lerussé can no longer benefit what constitutes a damaged, caused by the public disclosure of the Keolis group.

It is surely on the basis of a calculation of this type that Mr. Lerussé and his lawyer came to claim the group Keolis 25 million euros.

The lawsuit between Mr. Lerusé and Keolis takes place today (November 20, 2018), The judgment is eagerly awaited. As far as the French case law is concerned in this matter, it is not necessary that an application for the invention was filed to avail itself of the additional remuneration, yet will it establish with probity that the damage is actually 25 millions of euros …

Stay connected, we will let you know of the update …

SOTERYAH IP

#Hommage – Lise MEITNER – Radioactivity and Nuclear Physics

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Lise MEITNER (November 1878 AT – October 1968 UK) is renowned for her work on radioactivity and nuclear fission, as well as the discovery of protactinium.

She received 48 nominations and 21 scientific awards for her work, including:

-1925: Lieben price for the study of beta and gamma rays;
-1947: Award of honor of the city of Vienna for science;
-1949: Max-Planck Medal of the German Physics Society, with Otto Hahn;
-1955: Otto Hahn Prize for Chemistry and Physics;
-1957: elected honorary doctor at the Free University of Berlin, May 11, 1957;
-1966: Enrico Fermi Award, with Otto Hahn and Fritz Strassmann.

While studying in Vienna, she attended all courses taught by Ludwig Boltzmann and she studied articles published by Lord Rayleigh.

During her career in Germany, she oversaw the construction of a particle accelerator in the physics department, which she ran until 1938 in Germany.

As a jewish woman in the Hitler years, Lise MEITNER is first and foremost the symbol of unjustly ignored scientists, even though she was considered, secretly in her time, and publicly then until today as a pioneer in the discoveries of nuclear fission.

In 1938, Lise MEITNER was forced to flee from Germany, but continued her collaboration with her team, including Otto HAHN, by correspondence. For example, MEITNER and HAHN met illegally in Copenhagen in November 1938, and planned new experiments.
Otto HAHN conducted these experiments with Fritz Strassmann, and they showed that there is barium among the elements produced as a result of the bombardment of uranium with neutrons. Unfortunately, given the political situation, Lise MEITNER could not appear as co-author of the subsequent publication in Naturwissenschaften in december 1938, despite her major role in the conduct of this research.

The Nobel Prize for Chemistry was the awarded to Otto HAHN, much to the surprise of the scientific community, including Dirk Coster, a Dutch physicist who discovered Hafnium (Hf) (element 72) in 1923.

Lise MEITNER is said to have been the victim of what is known as the “Matilda effect”, namely the attribution of women’s scientific discoveries to their male counterparts.

Subsequently, Lise MEITNER received many honors, and was more recognized in the United States. She was a member of the Austrian Academy of Sciences and an honorary doctor of several universities.

SOPERYAH IP

#IPLaw – Rather seizure for counterfeiting or discovery procedure?

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Let’s start with a story that can be that of your company.

After long efforts, the company may have products recognized by its clientele as qualitative, including its distinctive signs and its constant search to offer high-performance products.
Whenever the customer recognizes the color, the name, the form, he expects to renew a more than satisfactory experience that he has already had with the products of the same company, and may expect to have additional advanced technical innovations.

Given the success of the first company, a second competing company may consider investing in the same market and offering similar products. Therefore, there is a limit not to be crossed, the freedom of the second company ending at the frontier of the intellectual property rights of the first one when they are regularly established.

If the competing company uses an identical or similar distinctive sign, to be compared to a registered trademark, there is a dispute on grounds of trademark infringement. If it is a technological innovation protected by a patent, it is rather a patent infringement.

But how to provide admissible proof that my competitor has reproduced my mark or my innovation (French procedures)?
1 °) The holder can mandate a bailiff to make a purchase statement. In essence, the bailiff buys the product and places it under seal.

This evidence is limited because there are usually a lot of commercial intermediaries. In addition, it is inoperative in most cases of infringement of a process patent.

2 °) The “royal” way is the seizure for counterfeiting. As a historical procedure in France, and implemented in Europe by a so-called “enforcemment” directive (2004/48), the seizure for counterfeiting allows the holder of intellectual property rights regularly registered, to request from the competent judge of the Court of First Instance, on the basis of evidence and the industrial property title in its possession, to issue an order for seizure.

On the basis of this order, the Patent Attorney and a bailiff visit the premises of the competitor to make the seizure.

It can be a seizure of samples, industrial documents, accounting documents, descriptive seizure, photos of installations … as provided in particular Article L. 615-5 of the Intellectual Property Code.

The procedure is very framed. Form defects can cancel the seiure. The appelant must commence an action on the merits within 20 business days or 31 calendar days after the seizure. If not, the seizure will be canceled.
In addition, the seizure is made by agents who are bound by professional secrecy, so much so that the secrecy of the business is not violated.

An abusive seizure engages the responsibility of the appelant, who will have to pay damages.

The purpose of the seizure for counterfeiting is to be able to provide substantial evidence of infringement of the rights from within the defendant’s company. Revenue from counterfeiting can be deducted as well as the product distribution chain.

Even if the procedure seems invasive, it is very framed so that fundamental rights are not violated.

Other jurisdictions such as those in the United States are based on so-called discovery procedures, where parties must exchange as much information as needed without hiding anything. In general, the most wealthy parties flood the other parties with an infinity of documents to be reviewed by the advisors. The less wealthy parties should take of their time, which would have been used for production, to search for the documents and send them to the other parties.

In comparison, the seizure for counterfeiting would go to the heart of the issue and enable to quickly collect information that is needed, unlike the discovery procedure.

We remain at your disposal for any additional clarification you may need.

SOPERYAH IP