#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.

The Soteryah Index and IP/Business ranking

Why a Soteryah index?

Detailed ranking – Soteryah index

Besides international investments in business, investors and applicants are oftentimes faced with a need to choose countries where they are to continue IP procedures.

The question then arises regarding in which countries to invest in priority, and based on which criteria.

The choice of countries where to invest must, as much as possible, take into account economic indicators, in order to have an objective picture of purchasing power and of the business potential.

It is in view of this need that we designed the SoteryahTM index. It takes into account economic data, inter alia from the databases of the international monetary fund, of the previous year.

The countries with a large annual economic production and a significant productive population are the best ranked.

On one hand, a “Luxury” index is calculated with more emphasis on economic production than on population elements. This index is intended for companies favoring for example an exceptional quality of products or services. The Luxury index corresponds more to products and services targeting an elite of the country at a relatively high price.

On the other hand, a “Mass Market” index puts more emphasis on population elements. This index is intended for companies favoring for example a price acceptable by the largest number of consumers. The Mass Market index corresponds more to products and services targeting the majority of the population taking into account average incomes.

Remark: The Soteryah index may not be suitable for certain countries for various reasons. This being said, it seems to be an interesting tool.

 

Conclusion

The data shows that Europe and the United States do seem to be the territories of primary choice.

Qatar is one of the countries where colossal investments can be mobilized.

African countries opted for supranational rights to facilitate investments in several countries.

Isolated countries, regarding International IP conventions, seem to be the least attractive from an investment perspective.

Top 50 Mass Market

Rank World Score Pt Tm
1  United States 248,0 WO P
2  China 145,8 WO A&P
3  Quatar 101,8 GC
4  Macau 90,0 WO A&P
5  Luxembourg 82,4 EPO A&P
6  Japan 82,0 WO P
7  Singapore 80,3 WO P
8  Germany 76,3 EPO A&P
9  Ireland 64,0 EPO P
10  Brunei 61,1 WO
11  Norway 60,9 EPO P
12  United Kingdom 60,6 EPO P
13  France 60,3 EPO A&P
14  United Arab Emirates 57,0 GC
15 Switzerland 56,2 EPO A&P
16  Canada 54,2 WO
17  Australia 53,0 WO P
18  Hong Kong 52,7 EPO*
19  Kuwait 52,6 GC
20  Netherlands 51,6 EPO A&P
21  Saudi Arabia 50,1 GC
22  Italy 48,9 EPO A&P
23  Korea, South 46,9 WO P
24  San Marino 46,2 EPO A&P
25  Taiwan 46,1 WO
26  Sweden 45,5 EPO P
27  Austria 44,1 EPO A&P
28  Spain 43,8 EPO
29  Denmark 43,2 EPO P
30  Iceland 43,1 EPO A&P
31  Belgium 41,8 EPO A&P
32  Bahrain 38,7 GC P
33  Finland 38,1 EPO P
34  Russia 37,7 EA A&P
35  Oman 36,4 GC P
36  Malta 35,1 EPO
37  India 33,4 WO
38  Israel 32,7 WO
39  New Zealand 32,7 WO
40  Puerto Rico 31,4 WO
41  Czech Republic 30,9 EPO A&P
42  Cyprus 30,9 EPO A&P
43  Poland 29,8 EPO A&P
44  Brazil 29,6 WO
45  Slovenia 28,7 EPO A&P
46  Turkey 28,4 EPO P
47  Slovakia 27,9 EPO A&P
48  Mexico 27,7 WO
49  Lithuania 27,2 EPO P
50  Malaysia 27,1 WO

 

NOTE: SOTERYAH and SOTERYAH IP are registered trademarks.

 

How to file a patent?

How to file a patent?
How to write a patent?
Vast questions!

The patent is essentially an industrial property right allowing the legal appropriation of a technical innovation. We can speak of a legal monopoly.

In return for this monopoly authorized by the state, the applicant must give a minimum of information on his invention.

The drafting of a patent application is subject to a particular formality, and must be done meticulously to avoid as much as possible third parties circumventing the patent, and to avoid insurmountable objections within the framework of the granting procedure.

The patent application includes a description, claims and possibly drawings. These different elements will be presented below. The request is thus filed with the Patent Office (INPI, OEB, OMPI, UKIPO, IPI, DPMA… depending on the case).

I- Claims
(how to write patent claims?)

This is a substantially synthetic part, at the end of the text of the patent application.

The claims are actually a set of features that define the invention. Each technical characteristic must be formulated as clearly as possible so that by reading the claim, one understands what is the subject matter for which a protection is sought.

In legal terms, the claims define the subject matter of the protection sought. They should be clear and concise and be based on the description. (Art. 84 EPC).

The claim is generally drafted like this: a device comprising an element X, an element Y, (characterized in that it comprises) an element Z.

II- Description
(how to write a patent description?)

The description presents the details of the invention. It must be the subject of a usual formalism, presenting separate parts.

The purpose of the description is to explain what already exists, how the invention differs from what already exists, and what specific advantages each feature brings.

The description must allow a person skilled in the art to be able to carry out the invention to the risk of facing an objection of insufficient description.

III- Drawings

The drawings illustrate the patent application when necessary. The elements of the invention in the drawings are identified by generally numerical references which are reproduced as such in the description for the corresponding explanations, and in parentheses in the claims, to facilitate reading and understanding.

IV- Abstract

The abstract is essentially a summary of the invention. It is generally illustrated by one of the figures when applicabe.

Conclusion
(how to file a patent?)

SOTERYAH IP assists you in the preparation and filing of your patent applications in particular in France, in Europe, and Internationally.

The prior art search

Prior art research consists of conducting a survey of documentary databases, in particular those specialized in patents, in order to try to find previous documents which disclose elements similar to the invention that you want to protect.

The question then becomes whether the invention to be protected has already been fully or partially disclosed.

If not, it could be recommended to file a new patent application to legally appropriate the technical elements of the invention and prevent a competitor from putting the same product on the market without our authorization.

Reservations are however to be put forward for prior art searches, the first being the fact that it is generally done on the basis of keywords which means that keywords that are not entered or not translated do not give any results.

The second limitation is that patents are published 18 months after the first filing, which means that there is a blind spot of 18 months during which earlier patents cannot be found within this period (filings made less than 18 months from the day of the search). On the other hand, unpublished patents are not opposable to subsequent filing under inventive step.

SOTERYAH IP assists you in your search for prior art and advice on patentability or infringement.

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

The profession of French IP attorney (Conseil en Propriété Industrielle)

The profession of French IP Attorney (Conseil en Propriété Industrielle – CPI) is a regulated profession like that of lawyers with specific ethics and professional secrecy.

In order to become a French IP Attorney, one must have technical or scientific background up to Masters level or an engineering degree. In addition, one must have at least 3 years of experience in a a French IP Attorney Firm and a law degree issued by the Center for International Studies for Intellectual Property (CEIPI) at the University of Strasbourg.

After all this course, one must pass the Qualifying Examination carried out by the French IP Office (Institut National de la Propriété Intellectuelle – INPI) together whith French Chamber of French IP Attorneys (Compagnie Nationale des Conseils en Propriété Industrielle – CNCPI) to be approved by the INPI for the filing of French applications.

A similar or parallel path can be taken to be approved by the European Patent Office (EPO) and to file European patents. In this case, it is the European Patent Attorney exam.

SOTERYAH IP assists you as French IP Attorneys and European Patent Attorneys for your files of new innovations.

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

#homage #IPDistinctions – Afred NOBEL and women’s awards at NOBEL 2018

Today, there is no need to present the Nobel Prize, which is undoubtedly a reward of international significance. The prize was awarded for the first time in 1901, and aims to reward people who, through their inventions, discoveries and improvements, or their work for peace, have “brought the greatest benefit to humanity”.

Alfred NOBEL was born on October 21, 1833 in stockolm and died on December 10, 1896 in Italy. He was a chimistre and a weapons manufacturer by his armament company Bofors. Alfred NOBEL has filed more than 350 patents. The chemical element Nobelium has been named in his honor.

Alfred NOBEL was born to a family of engineers. His grandfather Olof RUDBECK (1630-1702) was one of the most famous Swedish scientists of the seventeenth century. His father Immanuel NOBEL was a Swedish engineer, architect and businessman who sold many inventions. He invented the plywood and made many inventions in the armament. These last inventions did not imply much success in Sweden, of peaceful tradition. As a result, the NOBEL family moved to Russia in 1838. Immanuel NOBEL founded a marine mining company, which will be taken over by Ludvig NOBEL, Alfred NOBEL’s brother.

At 18 years old Alfred NOBEL went to study Chemistry in the United States for 4 years and in Paris for 1 year. In a context where gunpowder remained the only powerful explosive for a long time, the discovery of nitrocellulose in 1846, followed by nitroglycerin in 1847 stimulated research. Back in Sweden, Alfred NOBEL devoted himself in 1862 to the study of a safe use of nitroglycerine. He founded the company KemaNobel (later AkzoNobel), and faced several failures resulting in several explosions some fesant deaths.

After several years Alfred NOBEL succeeded in making the use of nitroglycerine less dangerous and in controlling its power. He accidentally discovers that the mixture of nitroglycerin with an inert and absorbent solid, Kieselguhr (diatomaceous earth) gives good results. Transport is thus facilitated because the explosion requires the use of a detonator. The Nobel detonator and patented in 1865, dynamite is patented in 1867.

He also has a French laboratory where he invented, by chance, another explosive more practical than dynamite, ie: dynamite gum or “dynamite extra Nobel” or gelignite (blasting gelatin), composed of nitroglycerine (93%) and collodion ( 7%).

He acquired many properties including the old castle of Sevran in Seine-et-Oise (currently Seine-Saint-Denis) and the castle called “La Maison du Fayet”, a typical house of the eighteenth century.

Before the end of his life, he moved to Sanremo in Italy.

It was as a result of an erroneous publication of an anticipated obituary of a French newspaper mentioning “The merchant of death is dead.” Dr. Alfred Nobel, who made a fortune by finding a way to kill more people faster than ever before, died yesterday “, which pushed him to leave a better image to posterity.

In his will, Alfred NOBEL bequeaths almost all of his fortune for the creation of a fund whose interests will be redistributed “to those who over the past year have returned to humanity the greatest services” in five different areas: peace or diplomacy, literature, chemistry, physiology or medicine, and physics. This is how the Nobel Prize was born. The fortune left is 31.5 million Swedish krona of the time, which is estimated at 179 million euros.

The 2018 edition was held today.
The prize was given to illustrious scientists such as Wilhelm Röntgen (Physics 1901); Hendrik Lorentz (Physics 1902); Henri Becquerel, Pierre and Marie Curie (Physics 1903), Ivan Pavlov (Medicine 1904); Johannes Diderik van der Waals (Physics 1910); Albert Einstein (Physics 1921) Niels Bohr (Physics 1922) …
The Nobel Peace Prize was awarded to Martin Luther KING (1964) and Nelson MANDELA (1993)

The 2018 edition wants to honor women by giving them 3 prizes:

Donna Strickland for having revolutionized laser technology. Prize is shared with Arthur Ashkin and Gérard Mourou (former teacher of Donna Strickland).
Dona Strickland and Gérard Mourou have developed a “method of generating ultra-short and high intensity optical pulses”. According to the Academy, the three scientists have revolutionized the physics of lasers so that they can reaakize extremely small objects and incredibly fast processes. The possibilities are numerous in precision instruments in research and industrial and medical applications.

Frances Arnold is Laureate of the Nobel Prize in Chemistry for her directed evolution methods for creating useful biological systems, including enzymes, metabolic pathways, genetic regulatory circuits, organisms, and directed evolution.

Nadia Murad who is an Iraqi human rights activist, goodwill ambassador of the United Nations for the dignity of victims of human trafficking.
She is awarded the Nobel Peace Prize with Denis Mukwege for their efforts to end the use of sexual violence as a weapon of war.

Inventing and discovering is bestowing substance to posterity.

SOTERYAH IP