#IPLaw, #TMLaw – Entry into force of trademark invalidity and forfeiture procedures before the French IP Office (INPI)

In Intellectual Property matters, major changes in law or procedures often come into force on “April Fool’s Day”. This is the case today with the entry into force of the procedures for the invalidity and forfeiture of trademarks before the French IP Office (INPI).

Background:

During the trademark registration procedure before the French IP Office, the examiner does not classically analyze the relative criteria for the validity of the trademark. After publication of the trademark application, third parties have a two months time limit to initiate opposition proceedings against the trademark application before the INPI, conventionally on the basis of prior rights. At the end of the procedure, the examiner registers the trademark.

It is possible that the French trademark be unjustly registered, for example if the holder of previous rights badly defended his opposition or has not followed-up the deadline to file his opposition procedure.

Until now, in such cases it was necessary to initiate proceedings at the competent High Court to be able to question the validity of the trademark, with the related procedural constraints, in particular the constitution of a specific Attorney-at-law.

Change of law (L. 716-1 s. CPI)

From now on, it will be possible to initiate specific procedures before the INPI in order to question the validity of a registered trademark by raising absolute and relative grounds for refusal or by invoking a forfeiture of the rights of the trademark owner. This is the subject of the new procedures for invalidity and forfeiture of trademarks with the INPI.

With the exception of certain specific cases, the request for invalidity is imprescriptible (L. 716-2-6 CPI).

The forfeiture request concerns the five years preceding the filing of said request (L. 714-5 CPI).

The procedure applies to trademarks registered from April 1, 2020 onwards (Decr. n ° 2019-1316 dated 9/12/2019).

Risks to be assessed

If one of your competitors obtains a trademark registered by the INPI unfairly, without the validity criteria being met, the competitor may block signs unduly or even initiate, against you, a infringement seizure, a provisional prohibition procedure, an infringement action …

In such case, your innovations would be hampered in their naming by these questionable trademarks.

Recommendations

To avoid this type of situation, invalidity and forfeiture procedures offer a new option to deal with this type of problem if you have not followed-up the opposition deadline or if you wish to raise absolute grounds for refusal.

Prior to this, the most suitable situation would be to set up a surveillance of the trademarks and applications of your main competitors to determine if some are unjustified and should be the subject of an invalidity or forfeiture procedure.

The same recommendations also apply to European trademarks, for which opposition, invalidity and forfeiture procedures were already in force.

Being assisted by a Trademark Attorney makes it possible interallia to ensure that relevant arguments are filed and to limit the risks of rejection of the invalidity and forfeiture procedures.

SOTERYAH IP remains at your disposal to organize surveillance strategies for this purpose.

#IPLaw, #PatLaw – Entry into force of the patent opposition procedure before the French IP Office

In Intellectual Property matters, major changes in law or procedures often come into force on “April Fool’s Day”. This is the case today with the entry into force of the patent opposition procedure before the French IP Office (INPI).

Background:

During the patent grant procedure before the French IP Office (INPI), the examiner determines whether the patentability criteria are fulfilled by the patent application. At the end of the procedure, the examiner grants a French patent. The grant procedure is an ex parte procedure, third parties are not party to the procedure.

It is possible that the French patent be granted, where the examiner would have missed an important detail which would have rightly prevented the grant of the patent, in particular a relevant published prior art.

Until now, in such cases it was necessary to file for a lawsuit before the High Court of Paris (Tribunal de Grande Instance) to be able to question the validity of the patent, with the related procedural constraints, in particular the constitution of a specific attorney-at-law.

Change of law (L. 613-23 s. French IP code)

From now on, it will be possible to initiate a specific procedure before the INPI in order to question the validity of the patent, being a party to the procedure. This is the subject of the new opposition procedure before the INPI (inter partes procedure).

The deadline for initiating an opposition proceedure expires 9 months from the publication of the grant of the patent in question (R. 613-44 IPC).

The procedure applies to patents granted from April 1, 2020 onwards (Ord. N ° 2020-116 of 02/12/2020).

Risks to be assessed

If one of your competitors obtains a patent granted by the INPI unfairly, without the patentability criteria being met, the competitor would have the right to initiate against you an infringement seizure, a provisional prohibition procedure, an infringement action …

In such cases, the only option would be bringing an action for a declaration of invalidity before the High Court of Paris, but the case can only be ruled after a long procedure before the Court.

Recommendations

To avoid this type of situation, the opposition procedure makes it possible to deal ahead of time with the problem of patents whose validity is questionable.

Prior to this, the most suitable situation would be to set up a surveillance of the patents and applications of your main competitors to determine if some are unjustified and should be the subject of opposition proceedings.

The same recommendations also apply to European patents, for which the opposition procedure was already in force.

Being assisted by a Patent Attorney makes it possible interallia to ensure that relevant arguments are filed and to limit the risks of rejection of the opposition.

SOTERYAH IP remains at your disposal to organize surveillance strategies for this purpose.

Searching for funds

The creation of start-ups and the development of the company are an obstacle course, in particular with regard to financing.

The prerequisite is of course the definition of a significant competitive advantage, which can then materialize in sales of products or services.

But from the start of the start-up, it needs a lot of funding to manage the first patents and brands, the first salaries, marketing, communication, sales …

It is the same for the developing company which is likely to have large orders to fulfill at the same time as these costs related to innovation.

It is therefore important to find the funding for the launch and for the maintenance of the activity, keeping in mind that this will be supported later by sales.

The emphasis is first on non-dilutive financing to first increase the value of your shares and not to lose control of your business too soon.

It is only in a second step that we will assess the advisability of going through dilutive financing of the Business Angels type …

SOTERYAH IP (and other consultants) assist you in the diagnosis of your needs, the financing strategy, the strategies for submitting grant applications, BPIFrance applications, and other institutional grants, honor loans and finally bank loans .

SOTERYAH IP

#IPLaw, ​#DELaw – Entry into force of the Trademark Modernization Act.

After EUIPO in particular, Germany has just put into force a new law on the unusual categories of brands. The Markenrechtsmodernisierungsgesetz came into force on January 14, 2019. For the record, this follows a corresponding European directive in force since 2016. Movement marks, multimedia marks and holographic marks are now officially filable before the German Office.

Another category is the certification mark, which makes it possible to confer quality labels with a better defined legal framework.

This new law improves the rights of applicants and makes it possible to approximate the provisions of the EUIPO marks.

SOTERYAH IP

#IPLaw #Brexit – News about Brexit and intellectual property rights

While objections to the BREXIT are raised with articles in the news, let’s review its impact on intellectual property rights.

There is much debate about the possibility for UK IP attorneys to represent their clients before the European Intellectual Property Office (EUIPO). This would represent an estimated turnover between 789 million and 1.7 billion pounds.

Even in the government, BREXIT is not unanimous. After his predecessor Jo Johnson in January 2018, the UK minister of science, research, invovation and intellectual property, Sam Gyimah resigned from Prime Minister Theresa May.

For now, the entry into force is scheduled for March 29, 2019.

For the record, as already explained in this blog (link), BREXIT will have no impact on classical European patents. Let us recall here that Switzerland and Turkey are parties to the European Patent Convention. A mechanism similar to the Euro-Turkish patent and the Euro-Swiss patent will probably be applied for the United Kingdom.

As far as the trademarks and Designs of the European Union are concerned, the rights specifically cover the EU, thus a solution has to be found for these rights after BREXIT. The solution has been detailed in this blog (link) and essentially consists in generating a UK IP right corresponding to the EU IP right without additional examination.

To follow closely …

Of course, SOTERYAH IP assists you in maintaining your UK and EU rights after the entry into force of BREXIT.

SOTERYAH IP

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

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

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

#IPLaw – Rather seizure for counterfeiting or discovery procedure?

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

#IPLaw, #IPBasics – Detention under customs control and custom seizure of more than 8000 counterfeit automobile parts in Drôme and Indre (FR)

EU law allows a regime of keeping goods in detention under customs control, when they are suspected of infringing industrial property rights.

Needless to say, it is important that rights must first be registered to justify the use of this regime.

Under this scheme, the procedure in France allows custom agents to retain imported goods by refusing any release for 10 days. Detention under customs may be initiated by a written request from the IPR holder, or on the own initiative of the custom agents.

The filing of a request for intervention of the customs is free of charge. The request is valid for one year, and renewable by a written request. As provided by law, when the goods suspected to be infringing are immobilized during a detention, the IPR holder must justify, within 10 working days, either of provisional measures or of the introduction of a legal action.

Within this period, the customs contact the right holder in order to have the goods appraised by an expert, generally the IP atorney of the right holder, to recognize whether or not the detention is justified and whether an infringement of industrial property rights is characterized.
Subsequently, according to the procedure, the holder can request the destruction of the goods in the absence of express objection from the importer. This is generally called the simplified destruction procedure. Alternatively or cumulatively, the holder may bring an action for infringement against the importer.

Actually, even without action by the owner of the IP rights, in some cases the customs authorities usually use their customs powers to destroy counterfeit goods, in obvious cases.

Thus, at the beginning of September this year, according to the provisions of the procedure, the customs office of Valencia (FR) has selected among the import declarations received, one particular from Turkey.

After checking the goods, the customs officers discovered window lift systems, door openings, and door handle parts. The customs announcement states that “none of the plastic packaging containing the car parts contained the wording “adaptable to “”, which suggests that the packages in question mentioned the names of the car trademarks.

The expertise of the holders of IP rights has recognized 3 740 spare parts as counterfeits. These counterfeits have been subject to a simplified destruction procedure.

The information was transmitted to the service within the territory of the recipient company, so that an inspection could be made on its premises, which enabled the seizure of 4 300 additional parts considered as counterfeits, which subsequently underwent a simplified destruction procedure.

In 2017, the French customs seized more than 8.4 million counterfeits articles in France.

Of course, the importer in good faith may request the intervention of an IP Attorney to make legitimate disputes and avoid having to cease his activity because of significant unjustified losses.

SOPERYAH IP

#CopyRLaw #EULaw #DELaw – CJEU Decision on Peer-to-Peer Copyright Matters

The case (C-149/17) pits the German publishing house Bastei Lübbe against a private individual, Mr Michael Strotzer, who has an internet connection which would have been used to share, and make downloadable, an audio book on a platform Peer-to-peer with an unlimited number of users.

For the record, French law established the entity HADOPI (High Authority for the Dissemination of Works and Protection of Rights on the Internet) and what is commonly referred to as the “graduated response”. Essentially, in such cases, the HADOPI, or more precisely the HADOPI Rights Protection Commission (CPD), sends successive warnings to the holder of the Internet subscription used.

After three unsuccessful warnings, the CPD may seize the judicial authority on the basis of the negligence breach for failing to prevent the use of its connection for infringement. The contravention can go up to 1,500 euros or 7,500 euros for legal persons.
The CPD can also invoke the basis of the offense of counterfeiting, likely to result in a sentence of up to 3 years imprisonment and 300,000 euros fine or 1,500,000 euros for a legal person.

German law provides a way out for Mr Strotzer. According to the case law of the Federal Court of Justice (Bundesgerichtshof), it is possible to invoke the fundamental right to the protection of family life, and the fact that family members have had access to the internet connection, such that the holder of said connection may not assume responsibility. It was on this basis that Mr. Strotzer argued that his parents living at home had access to this connection, without further specification.

In this context, the Landgericht München I asks the Court of Justice to interpret the provisions of Union law on the protection of intellectual property rights.

The judgment of the CJEU is more in line with the French interpretation. The Court asks the Landgericht München I to find the right balance between the right to an effective remedy and the right to intellectual property, on the one hand, and the right to respect for private and family life, on the other.

The Court considers that such a balance is lacking when there is almost absolute protection for the family members of the holder of an Internet connection.

The court asks the Landgericht München I to verify the existence, in German law, of other means, procedures and possible remedies.

To be followed closely…

SOPERYAH IP