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PATENTS

Modification of the limitation period for infringement proceedings

Modification of the limitation period for infringement proceedings

According to new Article L.716-5 of the French Intellectual property Code, “trademark infringement action is limited to 5 years from the day on which the holder of a right knew or should have known the last fact enabling him to exercise it”. This Article corresponds to Article L.615-8 for patent infringement actions (see our article here) and to Article L.521-3 for infringement actions related...

Higher quality for French patents

Higher quality for French patents

On May 22, 2019, the President of France issued a law previously adopted by the French Parliament regarding the growth and the transformation of French companies, with the view to strengthen the attractiveness of the French economy. One should celebrate that intellectual property (IP) represents a significant part of this law. As regards trademarks, the new law refers to future governmental...

Law and Intellectual Property as growth boosters

Law and Intellectual Property as growth boosters

This article is the transcription of a presentation by Manuel ROCHE, Industrial property attorney and President of the International Relations Committee of the CNCPI (the French Patent and Trademark Attorneys Institute), during the international symposium “Paris, European hub for business, digital, IP and tech law” which took place the 11th of October 2018, at the Tribunal de grande instance de...

EU / China – The battle for technology transfers

EU / China – The battle for technology transfers

Early June 2018, the European Union has initiated proceedings before the World Trade Organisation against China for failing to respect the intellectual property rights of European companies. Observing that “European companies coming to China are forced to grant ownership or usage rights of their technology to domestic Chinese entities and are deprived of the ability to freely negotiate...

Why would you pay a licence royalty if you do not need to?

On the 26th of September of 2017, the Court of Appeals of Paris issued the final decision in the case that lead to the decision of the Court of Justice of the European Union of the 7th of July of 2016 that we commented here (Royalty for a patent: what do you really pay for?). For the Court of Justice, Competition Law did not preclude the imposition on the licensee, under a licence agreement, of...

INSCRIPTA meets businesses at Paris Chamber of Commerce

[INSCRIPTA] is proud to be an official partner of Paris Chamber of Commerce for the next International Business Meetings taking place 27 November 2017 in Paris. The event is dedicated to helping companies expand their business overseas by meeting experts on various international matters. [INSCRIPTA] will be hosting a workshop on: Intellectual Property and Online Business Keys to international...

Unjustified threats in IP: a French case

While the UK Intellectual Property (Unjustified Threats) Act 2017 is in force since the 1st of October 2017, there exists no specific provisions in the French IP Law governing the forms of a letter containing a communication or a threat to bring infringement proceedings against someone, that would distinguish between actionable threats and permitted communications. The French common civil...

CNCPI Workshop – Digital Business and IP

CNCPI Workshop is the annual event intended to businesses and individuals to increase information and promote public awareness on intellectual property issues. The French Patent and Trademark Attorneys Institute (CNCPI), will organize the 2017 workshop on 7 November 2017 in several major French cities on the topic: "Digital Business and IP". It will address all necessary and useful legal advice...

Tax credit for patents in France

There is a specific tax credit mechanism in France known as “Credit d’impôt recherche” or tax credit for research (TCR). The mechanism provides for a tax credit equal to 30% of research and development (R&D) expenses up to 100 million euros and equal to 5% above that amount. The system is highly valuable for industrial, commercial or agricultural companies. French General Tax Regulations...

Changes of name or address must be registered with IP offices

When a company changes its name or address, it is advisable to register said changes for all its trademarks, designs and patents with the IP registers in order to update the owner's identification details for all industrial property titles. This ensures an up-to-date and uniform portfolio of IP titles, and enables the owner to initiate both administrative and judicial procedures without having...

Patent infringement without damages for the patent owner

Owning IP rights or IP titles without directly using them may raise serious difficulties when the legal framework is not appropriate. There can be many reasons why people or companies own IP rights and choose to have them used or managed by other companies. Often it results from a strategy aiming at keeping control over the main assets of one’s company, among which intellectual and industrial...

New: e-Soleau is online

Although they do not provide any legal protection, Soleau envelopes, named after their inventor, are a low-cost way of ascertaining the date of one’s creations in France. Until now, creations were to be carefully described in two identical copies each of them respectively placed in both compartments of a Soleau envelope. Once it was sealed and registered before the INPI (French PTO) through a...

Apple v. Samsung, assessing damages

On December 6, 2016, the United States Supreme Court issued a very expected decision that should become one of the most significant rulings of the year in the intellectual property world. It is all the more important that it deals with the Apple v. Samsung case, one of the most commented cases of the decade. Surely you know that Apple sued Samsung for infringing several design patents for...

A new Director for the French Patent & Trademark Office

Mr. Romain Soubeyran is the new General Director of the French Institute for Industrial Property, the French Patent and Trademark Office. According to the official press release, he previously was director of Mines ParisTech, one of the famous French Grandes Ecoles (executive engineering and business schools). He comes after Mr. Yves Lapierre, who was in office for the past six years. Mr. Romain...

Royalty for a patent: what do you really pay for?

The Court of Justice of the European Union issued a very important decision last summer that may very well prove disturbing for individuals and companies committed into IP licence agreements (CJEU, 7 July 2016, case C‑567/14). The case is rather complex and includes several proceedings in different countries since 2008 and originates in a patent licence agreement signed in 1992. A German company...

Brexit: what future for EU IP titles in the UK?

By referendum on 23 June 2016, the majority of British people voted to leave the European Union. Even if the exit is not to become reality before several months, the first effects relating to IP could occur very soon (1). As far as IP titles are concerned, transformation mechanisms will be defined after the United Kingdom formally notifies its decision to exit to the European Council, which...

Is the Patent Court the patent license court?

First of all, let’s remind our foreign readers that the French legislative body entrusted the entire litigation of intellectual property law to specialized courts of the judiciary system, in an attempt to enhance the specialization of French judges and to improve the quality of judgments. As a result, there are only ten first instance courts in France with jurisdiction in connection with...

Relevant disclosures: US patent v. EU design

To be valid, a Community design must be new and have individual character, which means it must produce on the informed user a different overall impression from that produced by the designs already disclosed at the time of registration. The publication of a US patent in 1995, although neither marketed in Europe nor even in the US, may be regarded as the disclosure of a prior design, with respect...

New rules and deadlines before the French Patent and Trademark Office

French government has recently been decided to make relationships between administrations and their users easier. With this in mind, they created a new rule according to which failure of an administration to answer a request within a two-month period should be considered as granting this request. In France, this rule is known as “Silence vaut accord” or “Silence means agreement”. But things...

IP official fees rise in France

Governmental decree of 10 June 2015, published 13 June 2015, decided a raise in official fees payable to the French Patent and Trademark Office, INPI or National Institute for Industrial Property. On average it is a 5% increase and all IP titles are concerned even though not affected in the same way. Whereas application filing fees for patents stay the same at €36, application filing fees for...

Trust is not confidentiality

In the business world, trust does not mean confidentiality. And being overconfident in business relationships may have irreparable consequences, especially as far as intellectual property rights are concerned. That is what the owners of a European patent and a French patent have just learnt before the French courts (1). After one of their business partners decided to end their collaboration,...

How to protect a concept?

As you may know, protecting a concept in France is not an easy task, mainly because a concept is a general notion or idea and because abstract ideas cannot be protected by copyright and even less by industrial property titles such as patents, trademarks or designs. Of course, even if a concept cannot be legally protected by itself or for itself, you can still achieve legal protection through...

IP: Judicial courts have exclusive jurisdiction

French Tribunal des conflits, arbitrating whether a case must be heard before judicial or administrative courts, has just ruled that judicial courts have exclusive jurisdiction over cases involving the liability of public entities as long as intellectual property law or intellectual property rights are concerned. A French photographer had filed a complaint against a French administrative...

Invalidity of dependent claims

French Cour de cassation, the highest civil Court in France, has just issued a decision, on May 20, 2014, reminding that the invalidity of dependent claims of a patent cannot be inferred from the invalidity of the independent claim to which those dependent claims refer. The patent was related to an identification device for a weapon, in particular a firearm. The Court of Appeals of Paris had...

INSCRIPTA’s interview in French magazine Informations Entreprise

[INSCRIPTA] has been interviewed by French magazine "Informations Entreprise" as part of a dossier dedicated to intellectual and industrial property and French Patent and Trademark Attorneys. Founding partners of [INSCRIPTA] Agnès DOYEN and Manuel ROCHE were given the opportunity to explain how they view their work and to remind that building a strategy for protection and defense of intellectual...

Reinforcement of customs action against counterfeiting

The new French law of 11 March 2014 reinforces the IP rights holder’s means of action against alleged infringers. In this respect, the customs often play a decisive role, since the customs detentions allow IP rights owners to block the counterfeiting goods, but also to obtain information relating to the counterfeiting networks. 1. Transhipment Transhipment of goods has been considered as an act...

French law of 11 March 2014 – Fighting against the infringement of IP rights

The new French law aims to fight against counterfeit products and the infringement of intellectual and industrial property rights. The bill, which we commented last December (1), has been approved very fast and very easily, with almost no opposition or disagreement among the members of Parliament. We decided to focus our attention on some of the main provisions of the new law which amends the...

Intellectual property rights in French Polynesia

If you own French registered trademarks, designs or patents, that were filed or renewed since 03 March 2004, you should find interesting to know that they are no longer valid in French Polynesia. One of the consequences of organic Law No.2004-192 of 27 February 2004, which proclaimed regional autonomy of French Polynesia, was that IP titles such as trademarks, designs or patents, delivered by...

Fighting against the infringement of IP rights: strengthening of French Law

In October 2007, France adopted a very important law to fight against counterfeit products and the infringement of intellectual and industrial property rights. This law was the French transposition of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. The new rules were globally acclaimed at first but it...

Cancellation action against a co-owned patent

Very often in patent infringement lawsuits, the defendant files a cancellation action against the allegedly infringed patent as a counterclaim, even before trying and demonstrating he did not infringe the patent. But however frequent such counterclaims may be, they are not to be filed with haste or casualness. A recent case judged by the Court of Appeals of Lyon provides a good example. One of...

Intellectual property rights warning

In France, the enforcement of IP rights is based on the first-to-file principle when in Common Law countries, the IP system is based on the first-to-invent or first-to-use principle. To warn the public of the existence or registration of trademarks, designs, patents or copyrights or to enforce those rights and obtain damages in case of infringement, the IP rights have to be filed and registered...

Seizing presumed counterfeit goods on the internet is (almost) possible!

Last April, the Court of Appeal of Paris declared valid the seizing process performed by a bailiff consisting of, first, making an official report according to which the alleged counterfeit goods could be bought and ordered through the internet and, second, proceeding with a detailed description of the delivered allegedly infringing articles in his own office and without the seized party being...

Infringement action, seizure of counterfeit goods and abuse of rights

The right to initiate judicial proceedings should be implemented with caution because, according to the doctrine of abuse of rights, it is likely to degenerate into an abuse, and then likely to be subject to sanctions by the courts, when it is performed in bad faith. However, there are legal matters, such as the infringement of intellectual property rights, for which determining what may...

Unitary patent

After 30 years of fruitless trying, a new European intellectual property right has been created: the European patent with unitary effect (hereinafter referred to as the unitary patent). It provides for uniform protection throughout the territories of the participating Member States, currently all the 27 member states but Spain and Poland, and should be effective shortly. The unitary patent will...

Inventions belong to inventors

The French Intellectual Property Code states that “The right to the [patent] shall belong to the inventor or his successor in title” (Article L.611-6) such as his assignee. And “Where an application for the grant of [a patent] has been made either for an invention unlawfully taken from an inventor or his successors in title or in violation of a legal contractual obligation, the injured party may...

INSCRIPTA, French and European Trademark Attorneys law firm

INSCRIPTA, French and European Trademark Attorneys law firm, is pleased to announce its official opening, after several weeks of preparation. Our firm welcomes you in Paris, France, at 10 rue d'Aumale in the ninth arrondissement. INSCRIPTA shares its offices with an Attorney at Law firm and wants to be your partner of choice for every legal aspect of your business related to intellectual and...