Jean-Pascal Decobert and Nicolas Hautier, European, French and Monegasque trademark attorneys of our team will attend the INTA annual congress in Barcelona from May 20th, to May 24th.

Our participation to this congress is the occasion to share and enrich our expertise regarding the case law and best practices concerning IP rights.

During this congress we also dedicate time to meet our foreign partners and extend our network. We can therefore exchange ideas for continuously enhancing the quality of the service we offer to IP rights owners.

If you wish to meet them there, please contact us and we will be delighted to schedule a meeting.

To schedule a meeting, please contact Ms. Pascale SIMOES: contact@hautier-ip.eu

On February 10th 2017 Italy has deposited their instruments of ratification before the Council of the European Union.

Italy is therefore the 12th EU Member State to take part to the Agreement.

At this stage, only the ratification of United Kingdom and Germany is missing for the UPCA to enter into force and for the European Patent with Unitary Effect to be applicable.

Despite the Brexit, United Kingdom had indicated to the Competitiveness Council in Brussels last November that he had launched the preparations for ratification.

Nicolas Hautier
European patent attorney

On January 16th, the UPC has released the declaration below. This schedule seems rather tight given it depends on the national ratifications by Germany and with more uncertainity by UK.

“The Preparatory Committee is now working under the assumption that the Provisional Application Phase (PAP) will start end of spring 2017, presumably in May, and that the Agreement on the Unified Patent Court (UPCA) can enter into force and the Court become operational in December 2017. The PAP will mean that the organization as such will be established including the start of operation of the UPC's formal governing bodies. It will also mean that judicial interviews can begin and appointments eventually confirmed. The start of the sunrise-period for the possibility to opt out European patents is now planned for early September 2017 which will provide a minimum of 3 months for patent holders who wish to opt out their patents to do so before the Court becomes operational.

The above timetable is conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application. If these are not achieved the time-plan will be disrupted.

There will be a final Preparatory Committee meeting in early March 2017, and in due course, updates and more specific details of the Committee’s work programme will be published on this website. Those who have applied for judicial appointments will be contacted separately.”


Nicolas Hautier
European patent attorney

The Enlarged Board of Appeals of the European Patent Office has just released the order of the decision for the case G1/15.
As a reminder, G1/15 relates to partial priority, i.e. claims encompassing alternative embodiments that are entitled to different priorities.

The order is as follows: “Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic “OR”-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.”

At the present time, only the order is released. We will come back to you with our analyse of the consequences of this decision as soon as the EPO publishes its full content.

Nicolas Hautier
European Patent Attorney

The Institute for creating and developing (IRCE) companies has invited Nicolas Hautier and Jean-Pascal Decobert to present the main processes and good practices that companies managers should implement to efficiently protect and enhance the value the innovations of their companies.

If you wish to attend this presentation please contact IRCE - Vincent Duclos : v.duclos@irce-paca.com.

Date: October 20th, 2016

The summer period does not prevent this reading relating to patents. The daily newspaper in question published an article entitled "the war of patents" which calls for a few comments as a practitioner of patent law. Technically, this concerns what would appear to be particularly promising innovations in the field of genetic manipulation, and for which the French woman Emmanuelle Charpentier has distinguished herself.
Le Monde first traces the background of the technical developments of the area in question and stresses the very close dates of the results published by different teams around the world. Apart from the team of Emmanuelle Charpentier, it seems that a team led by Fen Zhang at the Broad Institute filed patent applications, in particular in the USA at the beginning of the years 2010. Quite surprisingly and candidly, the journalists briefly say that "the Broad Institute, which filed the Zhang patent applications on December 12, 2012, managed to get them on the top of the pile by paying a higher price. ".
This last assertion deserves a response, as it may suggest that there is an area of non-law in the procedures to issue patents, in particular in developed countries such as the United States or the European Union. For memory, a patent application has a filing date, is subject to a formal review then, in the majority of countries, a substantive review (this is the case in the United States) during which an examiner determines whether the conditions for the issuance of a patent are respected, in particular given the state of the art on the filing date. In the framework of these procedures, there is no possibility offered to patent applicant, subject to finance, to ensure that the examiner favours the review of its application to the detriment of those of its competitors.
Fortunately, the rest of the Le Monde article explains that a procedure, called the interference procedure, allows the patent right to be shared between several competitors when inventions are very close, in both their subject matter and date. This is what actually happens for these technical innovations and which has not yet been judged by the US authorities. Therefore, there are indeed rules of law to ensure that a patent is granted to the entitled person, and not to the higher bidder with the Patent Office ...
In a fairer and less controversial way, the end of the article stresses the economic interest of the innovations in question, the technical complexity they imply and the future need for the various actors in this field to work together to enable the practical use of these genetic manipulations. The journalists indicate that there will necessarily be cross-licensing and the sharing of royalties between the different innovative companies.
Indeed, in such a case, patents are usually scattered between a host of companies who are in a relationship of interdependence. Nevertheless, there is rarely a deadlock situation. Indeed, each party has a clear interest to operate and not to immobilise its opponents. In this context, the patents around this innovation will undoubtedly be tools for negotiation and contractual and technical exchanges, rather than blocking weapons.

AIPPI 2016 World Congress (16th to 20th September 2016) in Milan


Jean-Pascal DECOBERT and Nicolas HAUTIER, European, French and Monegasque attorneys of our team will attend the AIPPI annual congress in Milan from September 16th, to September 20th.

Our participation to this congress is the occasion to share and enrich our expertise regarding the case law and best practices concerning IP rights.
During this congress we also dedicate time to meet our foreign partners and extend our network. We can therefore exchange ideas for continuously enhancing the quality of the service we offer to IP rights owners.

If you wish to meet them there, please contact us and we will be delighted to schedule a meeting.

To schedule a meeting, please contact Ms. Irina SPASSOVA: contact@hautier.fr

MARQUES 2016 Congress (20th to 23th September 2016) in Alicante

Ségolène LUHERNE and Marie-Clotilde SCHIES, European, French and Monegasque trademark attorneys of our team will attend the MARQUES annual congress in Alicante from September 20th, to September 23th.

Our participation to this congress is the occasion to share and enrich our expertise regarding the case law and best practices concerning IP rights.
During this congress we also dedicate time to meet our foreign partners and extend our network. We can therefore exchange ideas for continuously enhancing the quality of the service we offer to IP rights owners.

If you wish to meet them there, please contact us and we will be delighted to schedule a meeting.

To schedule a meeting, please contact Ms. Irina SPASSOVA: contact@hautier.fr

MARQUES 2016 Congress (20th to 23th September 2016) in Alicante

Ségolène LUHERNE and Marie-Clotilde SCHIES, European, French and Monegasque trademark attorneys of our team will attend the MARQUES annual congress in Alicante from September 20th, to September 23th.

Our participation to this congress is the occasion to share and enrich our expertise regarding the case law and best practices concerning IP rights.
During this congress we also dedicate time to meet our foreign partners and extend our network. We can therefore exchange ideas for continuously enhancing the quality of the service we offer to IP rights owners.

If you wish to meet them there, please contact us and we will be delighted to schedule a meeting.

To schedule a meeting, please contact Ms. Irina SPASSOVA: contact@hautier.fr

AIPPI 2016 World Congress (16th to 20th September 2016) in Milan


Jean-Pascal DECOBERT and Nicolas HAUTIER, European, French and Monegasque attorneys of our team will attend the AIPPI annual congress in Milan from September 16th, to September 20th.

Our participation to this congress is the occasion to share and enrich our expertise regarding the case law and best practices concerning IP rights.
During this congress we also dedicate time to meet our foreign partners and extend our network. We can therefore exchange ideas for continuously enhancing the quality of the service we offer to IP rights owners.

If you wish to meet them there, please contact us and we will be delighted to schedule a meeting.

To schedule a meeting, please contact Ms. Irina SPASSOVA: contact@hautier.fr

The mobile applications market has undergone rapid growth since its creation. In July 2008, when the Apple store (App Store) was launched, only 500 applications were available. One year later, the App Store had 65,000 applications and over 1.5 billion downloads. In 2015, the two biggest stores (App Store, Google Play) respectively had 1.21 and 1.43 million applications.

It is clear that this market which was still non-existent less than 10 years ago,is now essential both for developers and for economic operators in general. Here are a few examples in figures:
- in 2015, Apple announced a turnover for its applications store of 20 billion dollars (of which 14 billion paid to developers),
- Gameloft, a company specialising in the production of mobile games (tablets and smartphones), announced a record turnover of 256.2 million Euros for 2015,
- According to the ACPM, just for the month of February 2016, the application of the "L'Equipe" newspaper had 2,217,242 visits for 842,188,146 pages viewed,
- In 2013, according to Inmobi, 57% of application users have already made purchases through applications.

All these elements show that applications are now consumer goods, and constitute vital assets for many companies.

In this respect, the protection of this intellectual property becomes increasingly important, and even if the current tools do not seem to be well suited to a simple and effective protection of these new intangible assets, solutions already exist.

Thus, several types of protections may complement one another to protect these applications.

The first protection is implemented directly at the heart of the application, i.e. on its source code. A computer code can be protected (cumulatively) by copyright (L112-2, 13°) and by patent law (L611-10) under certain conditions.
Protection by copyright requires no filing

Indeed, the rights are assigned upon the creation of the work (in this case, the software). Nevertheless, in case of infringement, a person needs to be able to prove that he is the original author of the work.

As such, it is strongly recommended that the software's source code is filed either with a bailiff under seal, or with the APP, for example. The advantage of copyright is that this type of protection is automatic. Nevertheless, the protection is conferred only on the source code itself, and not on the functions it represents. Thus, an identical function coded differently will escape the monopoly held by the copyright holder.

As for protection by patent, it allows a function of the software to be protected under certain conditions. To be eligible for protection under patent law, the software must have an additional technical effect. This is the case, for example, of an algorithm which improves resource consumption or increases data security, software which improves the processing of a signal or display. Conversely, software with no technical function (display of an interface, or word processing software, for example), cannot be protected by a patent.

Please note that here, we are only talking about a possibility of protection by patent. Of course, the usual conditions of patentability (novelty, inventive activity and industrial application) must still be met to obtain the issuance of a patent.
Depending on the application, a database may also be created and used. Thus, this database can also be the subject of an independent protection.

The second protection is to protect the form of the application, i.e. mainly its appearance and name.

To protect the name of an application, trademark law is entirely suitable.

In the same way that one can protect the name of a product, the name of an application is protectable. Subject, of course, to compliance with legal requirements (distinctive nature, availability, legality). This is the case, for example, of the SHAZAM® application.

To protect the appearance of an application, design law can be a solution, in combination with copyright. Once again, whenever there is an original creation, a copyright is automatically conferred on the work. Thus, when a developer proceeds with a filing with a bailiff or the APP, he will be instructed to provide screen copies or any other copy of the representation of his software.
Design law does not require any condition of originality, but a condition of specific or individual nature to be applied. Thus, one of the solutions to protect an application or website is to file, before any disclosure, the frame of the software's graphic interface. Through this, a protection of the aesthetic part of the application interface is possible.

All these elements show that the protection of applications is possible under certain conditions and in certain respects. Thus, it is important to bear these different possible protections in mind, because usually, it is prior to any disclosure that they must be claimed. Moreover, obtaining one or more protections on an application can enhance the value of the application in the assets of its proprietor. This value can then facilitate the economic development of the holder of the rights, in particular by developing a licensing strategy (this is the case, for example, of video game franchises), or by finding investors.

Of course, Hautier's entire team is at your disposal for any further information.

All our team has been deeply moved by all the messages of support and friendship received from all over the world.

The members of our team and their families are all safe.

Hautier IP Team

Funding by the people, also called "Crowdfunding", is a concept which many Start-ups dream of. Made popular by the emergence of new communication technologies and the proliferation of social networks, this very old principle which long remained the preserve of humanitarian agencies now affects every imaginable field, both technological and artistic.
In this uncertain economic era, it has become increasingly difficult for Start-ups to obtain financial aid without advancing guarantees. Paradoxically, these guarantees can only be obtained by a first fundraiser. This is where Crowdfunding comes into play.

Indeed, in cases where a banker would think long and hard about the commercial potential of a spherical drone for three-dimensional mapping, the engineer, sci-fi fan, geek, photo enthusiast or simply the dreamer may all want to see this object become a reality, as long as the project seems solid.

Thus, with the help of the man on the street, it is now possible for any Start-up to attempt a first fundraiser without going through a bank and therefore the more stringent criteria required by this type of establishment.
In addition, in order to cater to the full range of budding investors, many financing solutions are possible. There are 4 main types.
• It may be a gift. In this case, an individual or legal entity contributes financially to a project without expecting a return on his/its investment. This type of investment is mainly suitable for associative projects or for personal projects.

• Another investment solution is based on the reward. In this case, our investor, an individual or legal entity, gives a sum of money in exchange for a reward.
Generally, project promoters then have two solutions interms of rewards. These may be gifts or goodies, such a promotional t-shirts for example. The other solution, also very popular, is a prepayment of the future product of the funded project. In this last case, the investment is fixed at a rate expressly corresponding to a product from the project, provided, of course, that the product is actually sees the light of day. In all cases, several levels may exist depending on the project, meaning that the investment can be larger or small depending on the desired reward.

• Another funding solution is the loan. In this type of investment, the money paid to the project promoter is a loan which he undertakes to repay, with or without interest, depending on the terms of the loan.

• Finally, the last mode of investment among those most frequently encountered is an equity investment, i.e. an acquisition of a share of the funded company, directly or indirectly. This type of investment is found on some platforms that mainly concern large-scale projects and more seasoned investors.

With this broad range of platforms and financing systems, Crowdfunding is attracting more and more Start-ups, and is even getting noticed by some large groups, who are beginning to see Crowdfunding as a fertile ground for market studies, among others. However, as useful as Crowdfunding may be, it must be specified that many dangers lurk for project promoters.
One of the main dangers concerns the possible patentability or not of their most innovative solutions. Indeed, Start-ups are known as a source of innovation and more particularly in these times when technology is playing an increasingly important role in the global economy.
However, to motivate potential investors, Start-ups must disclose their innovation(s). While a confidentiality contract can be signed with a banking partner, this is not the case for Crowdfunding.
Indeed, Crowdfunding is based on a presentation of the innovative solution to the widest possible audience in order to gather as many funds as possible.
Thus, in the case of Crowdfunding platforms, the promoter must first present his innovation to the platform itself so that it can sort through all the projects that are proposed, then the project must be sufficiently described and detailed for potential investors to take the plunge and invest.
Due to the multitude of Crowdfunding platforms, we are beginning to receive some feedback which confirms the risk as regards patentability. Indeed, the disclosures made by many Start-ups have very often been the cause of an inability to file a patent, as the Crowdfunding campaign naturally falls within the state of the art.
These situations are a major source of failure for very many Start-ups which, by lack of information and assistance in the field of Intellectual Property, crash and die, although their project was originally viable.
This choice of what may or may not be disclosed during a Crowdfunding campaign is a crucial issue for a Start-up. That which may or may not be the subject of an intellectual property right must be carefully analysed before going ahead and presenting solutions to the world. The best strategy would be to have an analysis performed by an intellectual property attorney to assess the patentability of the solution before its presentation to potential investors.
Therefore, in this innovative ecosystem which is open to all, any project promoter must question the need for the secrecy of certain aspects of its innovation or the filing of a patent application before embarking on a Crowdfunding campaign, to limit as far as possible any disclosure that would torpedo the patentability of its innovations as, let us not forget, intellectual property rights are highly valued assets and a guarantee of security for professional investors.

Benjamin DELSOL
Patent Engineer

Journalists have often seen the Macron Law (Law n° 2015-990 of August 6, 2015) as a series of measures spread over a broad spectrum of legal areas that may have an effect on the economy.

It should be recognised that in the field of intellectual property, and especially patent law, it is a seemingly small-scale legal change that was taken with respect to employee inventions. Indeed, Article 175 of the Macron Law amended Article L. 611–7 of the Intellectual Property Code stating, as regards inventions under mission, that "The employer informs the employee who is the author of such an invention, when it is the subject of an application for an intellectual property title and upon issuance, if applicable, of this title".
This apparently simple change nevertheless raises some questions. To begin with, it is useful to recall that the Intellectual Property Code provides for 3 types of inventions made by employees, i.e. persons bound by an employment contract.

The first type concerns interventions under mission, i.e. those produced by the employee in the performance of his duties and under his employment contract. In this case, the ownership of the invention reverts ab initio to the employer, and the employee has a right to additional compensation. For other so-called non-work-related inventions, a differentiation is made between inventions attributable to the employer and those which are not.
Regarding inventions under mission, it appears that the drafter of the Macron Law wished to offer employees greater visibility on the protection of inventions produced by them for the exercise of their rights, in particular the right to additional compensation.
Although the aim of the law is commendable, there is a risk that the amendment made to the former version of Article L. 611–7 of the Intellectual Property Code gives rise to more questions than answers.

Firstly, one can imagine that the information obligation incumbent on the employer aims to enable employees to exercise their right to additional compensation and, therefore, the five-year limitation period relating to this claim is covered by the change in the law. However, this change does not expressly indicate the starting point of the limitation period and if the filing date or the date of issuance of the patent should be retained as the relevant date. Furthermore, this change might suggest that the employee has sufficient knowledge concerning the use of his invention when he is informed of the filing and issuance of the patent, without taking other elements into account, for example concerning the actual use of the invention made by the company.

Focusing on inventions which are the subject of patent applications, this amendment in the law does not clarify the fate of the additional compensation for inventions under mission which are not the subject of a patent application, for example under a strategy of reservation by a secret as an alternative to the patent.
The modification induced by the Macron Law also sheds no light on whether these provisions are applicable by extension to patents filed abroad and to European patents designating France.
Finally, this amended version of Article L 611–7 of the Intellectual Property Code also gives rise to an additional requirement for the employer, which will have to pass on to the inventor employee information concerning the filing and issuance of patents. Although the issuance of the French patent often takes place 3 to 4 years after the filing, it would be advisable for companies to implement a systematic procedure of information to employees on receipt of the notification of issuance of the patent. Of course, this information will be much simpler if the inventor is still an employee of the company at the time of the issuance ....
It is not certain that companies will enjoy this "administrative simplification".

Jean-Pascal DECOBERT

March 23, 2016 is the date of entry into force of the new Regulation* on the European trade mark.

This implies several changes in the immediate future, both institutional and technical.
The main changes are as follows:

1 – The renaming of the title
The Community trade mark is replaced by "European Union trade mark".

2 – The renaming of the Office of Community Trade Marks
The Office for Harmonisation in the Internal Market (OHIM) now becomes "the European Union Intellectual Property Office" (EUIPO).

3 – The change in the fee system
The EUIPO adopts a system of "pay according to your needs", i.e. it is now a system of class fees. Thus, if you are interested in filing your trademark in a single class of goods or services, you will pay a lower fee than with the previous system. The same applies for the renewal.

4 – Change concerning the description of goods and services
The Regulation expressly provides in Article 28 that "The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood."


This is based on the decision of the Court of Justice of the European Union of 2012 (IP TRANSLATOR decision), which clearly stated that the protection conferred by a trademark covering the headings of the classes of the Nice Classification must be strictly limited to the literal meaning of the terms mentioned.
This only confirms the extreme vigilance that is needed with regard to the choice of the heading to protect when filing your trademarks.

For trademarks filed before this decision of June 22, 2012, the Office has nonetheless established a "sunrise" period of 6 months, ending on September 24, 2016. During this period, the holder may file a declaration in which he clearly, precisely and specifically states the goods and services, other than those clearing falling under the literal meaning of the heading indications, so that the Office can modify the register on the trademark concerned.

Many other more technical aspects are concerned by this new Regulation, relating for example to the registration procedure, the examination of absolute and relative grounds for refusal, the procedure for the opposition and cancellation of the European Union trade mark.

Other changes will take place as of September 24, 2017, i.e. in particular the abolishment of the requirement of graphic representation of the trademark and the creation of collective certification marks.

The amendment of the EU Regulation comes from the 2015/2424 reform of the "Trademark Package" which aims to harmonise and modernise trademark law within the European Union. Thus, Directive 2008/95/EC of 22.10.2008 to approximate the laws of the Members States in the area of trademarks has been recast with the adoption of the Directive of 16.12.2015**. The Member States will therefore have to transpose this Directive into their national legislation. Thus, France must implement these provisions no later than 14.01.2019 for certain aspects and 14.01.2023 for others.

We naturally remain at your disposal to discuss all these issues with you, and to check the implication of these changes on the protection and management of your trademarks.
*Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16.12.2015
**EU Directive 2015/2436 of the European Parliament and of the Council of 16.12.2015

Ségolène LUHERNE

Because it is a major commercial and economic asset for any company, it is essential to protect your trademark.
Because the Principality of Monaco obviously constitutes a lasting economic and social model benefiting from a diversified economy looking to the future.
In this way, it is important to state that the filing of a trademark at Community level does not cover the territory of Monaco.

It is therefore necessary to file your trademark directly in this country, and there are two solutions available for this:
- nationally, via a national trademark examined by the intellectual property division of the Economic Expansion Directorate of Monaco;
- internationally, via an application for “international” trademark designating Monaco.

By opting for the national filing of your trademark, and after having verified its availability, you will benefit from a very swift examination and registration procedure since the Monegasque Trademark Office will issue a certificate of registration within a period of around 4 to 6 weeks.

This official property title will be issued to you subject, of course, to respect for the conditions of issuance applicable in Monaco, namely that the sign used must not:
- be contrary to public policy or good morals;
- be protected by Article 6 ter of the Paris Convention (State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organisations);
- expressly designate the products and/or services set out in the registration application;
- comprise enunciations that may mislead the public;
- expressly describe the type, the quality, the quantity, the purpose, the value, the place of origin or the time of production of the products and/or services set out in the registration application.
-
Furthermore, it should be stated that there is no objection procedure in Monaco which could delay registration of your trademark. Third parties therefore cannot contest a trademark application before the Monegasque Trademark Office within the framework of an administrative procedure, but must resort to court proceedings.

Considering the foreseeable costs, third parties generally hesitate to instigate such proceedings if the infringement of their prior rights is not really evidenced.

Last significant interest: the filing of a trademark in Monaco is very affordable since the total costs for protection until expiry of the renewal generally amount, on average over 10 years, to a few dozen euros per year.

For all these reasons, strategic, economic and financial, we are naturally available to your company to assist you with your filing procedures in Monaco.

Marie-Clotilde SCHIES
CPI Trademarks, Designs and Models

Following on from our letters relating to “Patent Trolls”, we present the “made in Google” counter-attack.
Although the invasion of the Patent Trolls continues, particularly in the United States, several months ago Google launched its counter-offensive comprising three phases.
First phase, codename: Patent Purchase Promotion, or how to cut off the supplies of the invader.
Last May Google launched a “temporary” portal lasting one month, enabling everybody, companies and individuals, to offer patents for sale only to Google. For this first experiment, the Mountain View firm limited the promotion to patents issued on US territory.

After a stage of pricing and registration of the patents offered for sale by each applicant, Google studied all offers during the next month.

Of course, the US firm specified, upon each purchase of patents, that it reserves the right to enter into licence agreements with other players in the industry. Bonus for the seller, which keeps its personal exploitation rights without payment.
The operation thus generated several thousand offers of patents of an average unit value of 150,000 dollars, with the amounts varying between a few thousand dollars to over one million dollars (for 21% of patents in question). Almost 40% of patents put on sale were generated by industry, as compared with 25% by individuals.
This first phase was a real unexpected success for Google, which could thus get its hands on a multitude of patents, in the same way “saving” them from the clutches of the Patent Trolls which themselves could have acquired these patents:
“By simplifying the process and opting for a short presentation time, we can concentrate our efforts on valuing the patent assets and swiftly obtaining responses from potential sellers. We hope that this will be conveyed by a better experience for the sellers, and will eliminate the complications linked to patent trolls”, explained Allen Lo, legal advisor responsible for patents at Google.

Second phase, codename: Patent starter Program, or how to boost startups.

After having once again inflated its portfolio of patents this summer, the Mountain View firm instigated the second phase of its anti-Patent Trolls plan. In order to protect itself from their attacks, but also to help startups to keep the intellectual property resulting from their works, Google offered 50 carefully selected startups to join its new “Patent starter Program”.
These startups were selected in accordance with criteria specified by Google: they are in the same technological sector as it is, and present an annual turnover between 500,000 dollars and 20 million dollars.

Each of these startups was then asked to choose two patent families corresponding to their field of activity from among three to five families acquired by the US search engine.

Google gave certain patents to these startups free of charge, under certain conditions, and also allowed the purchase of other patents from its collection at advantageous prices.
There are three conditions for the startup wishing to acquire these titles:
- the patent bought can only be used to respond to attacks of a company, and under no circumstances offensively. In the event of offensive actions, the patent would immediately return to its original owner, i.e. Google.
- Google retains a non-exclusive licence over each of the patents.
- the startup must participate in the third phase of the Google anti-Patent Trolls programme....
Third phase, codename: LOT Net, or the beginnings of a rebellious alliance.
The third condition enabling these startups to benefit from Google’s support concerns their free membership in the LOT Net (Licence On Transfer Network) for a duration of at least two years.

LOT Net is an initiative launched in 2014 and comprising 21 members, mainly Silicon Valley companies. Here you will find both bank giants and automobile monsters, but also startups with high potential.
The principle of this alliance is simple: each member grants the others a right of exploitation over the patents it transfers to third parties. The aim of this process is to protect them from potential attacks by Patent Trolls. It thus appears evident that the more numerous the members of this alliance, the stronger the protection for each of them.

Currently, more than 300,000 patents have thus been listed as subject to this initiative.

At a time when new technologies are mutually feeding and following on from each other, an interdependence of patents is appearing and involves the establishment of new structures in order to guarantee both technological advance and also profits. Faced with new enemies such as Patent Trolls, LOT Net is standing up as a league protecting the intellectual property of its members and calling for unity.

Benjamin DELSOL
Patent Engineer

We are pleased to announce that our firm has recently acquired the activity of Cabinet Pécheral with immediate effect. Florence Pécheral wishes to thank each of her clients for having entrusted her with IP cases all over her carrier of more than 40 years in Monaco.
Entirely dedicated to Monegasque intellectual property matters and located in close vicinity to the PTO of Monaco Hautier IP, thereby consolidates its position of a leader in IP services in MONACO.

It is not easy for an SME or start-up to build its image ...
On the one hand, communication budgets are limited, the financial resources which can be mobilised for effective protection by trademark law are modest. And the trademarks registers are already full: 86,000 new French registrations and over 114,000 new Community registrations (INPI sources) in 2013!
Therefore, it is not easy to create a pathway, bearing in mind that a valid trademark must be available, i.e. one which does not infringe prior rights.

On the other hands, choosing a brand name is a tricky business. Usually, when a company has no powerful advertising resources, it tends to favour names related to the characteristics of its products or services. The reasoning behind this is that the target customer must be able to quickly associate the brand with the type of product or service. It is also accompanied by an assimilation of a domain name filing strategy and a trademark filing strategy, an assimilation which is incorrect as these two procedures do not follow the same rules. This trend, although quite natural, raises legal issues.

Article 711-1 of the Intellectual Property Code requires that the trademark is distinctive for the products and services covered. In other words, if the sign is generic, usual or particularly descriptive for these products and services, the trademark may be denied registration or subsequently cancelled. And the experience of the industrial property attorney shows that choosing rather mundane brand names increases the risks as they interfere with prior trademark rights.
These constraints are substantial, and may discourage the trademark applicant in its protection strategy. This is harmful for the company's interests, as no effective protection is offered without trademark registration, and no creation of property is produced.
However, there are many ways to build an effective corporate image and which meet the conditions for proper trademark protection.
Comuto is an example of this. Little known by this name, Comuto has a more well-known brand name, Blablacar® and made the news with a capital increase of 100 million Euros in 2014 and has over 20 million users to date, connecting car owners interested in carpooling.
Historically, the company started out with the domain name covoiturage.fr, for which the barriers to protecting the brand name can quickly be understood as, in terms of distinctiveness, the term "covoiturage" (carpooling in English) is not especially original ... However, in 2013, the communication strategy evolved and became interesting for our purposes: the name blablacar® appeared. This has the distinctive character required by trademark law. Its originality limits the risk of interference with earlier marks. And it is compatible with a marketing desire to evoke the service offered.
Therefore, you need to be creative when choosing the company's trademarks, while keeping in mind that the choice of names of products or services must comply with trademark validity conditions. Blablacar® shows that it is possible!


Jean-Pascal DECOBERT

Jean-Pascal Decoert

In France, and in most other European countries, when a judge considers that an act is an infringement of a patent, the infringing acts are immediately ordered to cease.

This is not the case with the provisions of the Unified Patent Court (UPC) Agreement, whose articles constitute the legal basis for actions based on European patents with unitary effect, due to enter into force next year.

The UPC Agreement in fact gives judges discretionary power over whether to order permanent prohibition in the event of an infringement.
Article 63 of the latest version of the UPC Agreement, states that: "Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. (…)."

This text therefore stipulates that the immediate cessation of acts of infringement is only one possible alternative among others.

In the event of acknowledged infringement, the judge may authorise the acts to continue, while ordering that compensation, typically a royalty, is paid to the patentee.

We can imagine that this royalty will usually be higher than the probable licence fee which the parties to the dispute would have agreed during non-litigious negotiations.
The infringer may therefore be authorised to continue using the patent for the price of a royalty.
This measure has been mainly introduced for two cases.
The first case concerns the infringement of essential patents covered by a FRAND licence. When the amount of the FRAND licence is the sole object of the dispute, and the infringer has expressed a wish to obtain a licence, the judge may consider that permanent prohibition is not appropriate and that payment of damages will be sufficient compensation.
The second case relates to patent holders with no other economic activity than collecting royalties for their portfolio of patents. These patent holders are often called Patent Trolls, when their actions are morally and economically disputable.

We can therefore hope that with this new version of Article 63, the Unified Patent Court (UPC) Agreement will offer an effective way to stop Patent Trolls in Europe.
However, this simply a possibility offered to the judges, and only effective enforcement of their discretionary power by the judges will enable us to see whether the Patent Trolls will continue to thrive in Europe.

We have already mentioned the introduction, within the European Union, of a judicial organisation specialising in patents, which will deal with disputes concerning both the European patents we are already familiar with and for the forthcoming patents with unitary effect. The idea is to create a supra-national, unified system. The objective is simple: to unify patent litigation in Europe, by centralising disputes so that the European countries can move towards a common model.

Already ratified by France in 2014, the Unified Patent Court (UPC) Agreement has taken much longer to come into effect than was hoped by the European bodies. The Member States have not been in a hurry to ratify it; even the principal countries, Germany and Great Britain, have taken their time.
However, two recent advances should speed things up.

The first is the rejection, by the CJEU (Court of Justice of the European Union) of Spain's appeal against the UPC Agreement. Specifically, Spain contested the legality of the provisions of the Agreement concerning the linguistic terms of the UPC. Politically, this rejection should encourage the Member States to continue the ratification process, as the last legal obstacles have virtually been removed.

The other news is the publication, in cases of disputes subject to the UPC, of the projected amounts of procedural costs and procedural expenses recoverable by the winning party. This aspect is clearly crucial in practice, to assess the real attraction of this court. Users of the French judicial system will initially have to get used to the procedural taxes. One part is fixed (regardless of the financial value of the dispute) and the other part depends on the amount at stake. For example, the fixed part would be €11,000 for an infringement action and €20,000 for a patent invalidity action. The variable part would be zero for amounts below €500,000 and would rise to a maximum of €220,000 for amounts higher than €30,000,000. The defendant will usually have to put their hands in their pockets, as the patent invalidity claim in response to an infringement action will cost the same amount as the infringement action, up to a limit of €20,000. An infringement action brought in response to an invalidity action would incur a fixed sum of €11,000.

In a decision dated 18 November 2011, the OHIM confirmed the partial refusal of protection for the MONACO word mark, on the dual grounds of lack of distinctive character and the descriptive character of the mark for the cited goods and services.
The Government of the Principality of Monaco lodged an appeal against this decision, then the MONACO trademark no. 1069254 was transferred to the Monaco Limited Company MARQUES DE L'ETAT DE MONACO (MEM) on 17/04/2012.

In a decision dated 29/01/2013, the 4th Appeal Chamber of the OHIM rejected the appeal.

In particular, it considered that the MONACO mark is descriptive and should be refused as it solely consists of a term designating the territory of the same name, and may therefore be understood by the consumer as designating the geographical origin or destination of the goods and services concerned.

The MEM company therefore took the case to the Court of Justice of the EU.

Here we are only concerned with the parties' arguments concerning the question of the distinctive character of the MONACO mark.

The MEM company specifically accuses the OHIM of having used the "public of the Community" as the relevant public. It considers that the relevant consumer profile has not been determined, particularly with regard to the statement according to which the term "Monaco" "refers more to concepts of reputation and luxury".

The Court states that there is a general interest in protecting the availability of geographical names and that the following are excluded:

- registration of geographical names as marks when they designate specific geographic places already famous or known for the category of goods or services concerned;

- registration of geographical names likely to be used by businesses as indications of geographical origin for the category of goods or services concerned.
In this case, the Court's examination was limited to the question of whether, for the relevant public, the MONACO mark consists solely of an indication that could be used, in trade, to designate the geographical origin of the goods or services concerned.

According to the judges, it is consistent that the term "Monaco" corresponds to the name of the Principality known all over the world, due in particular to the reputation of the royal family, the organisation of the Formula One Grand Prix and the circus festival. They also mention the border with France, the proximity with Italy and the use of the Euro by this State as elements that retain familiarity with the Principality by citizens of the European Union.

For the Court, the term "Monaco" necessarily evokes the geographical territory of the same name, regardless of the relevant public's linguistic group.

In addition, it considers that a sufficiently direct, practical link between the goods and services concerned and the MONACO mark was established by the OHIM, to consider that the term "Monaco" could be used as an indication of geographical origin or destination of the goods or place of service provision; consequently, the Court considers that for the goods and services concerned, the MONACO mark has a descriptive character.

Observations

This Order illustrates the current interest in protection of geographical names, particularly in France with the Hamon Law of 17 March 2014, which offers greater protection to geographical names (see the article by Ségolène Luherne on this subject in our previous Newsletter in December 2014, available on our website).

In this case, it should be noted that the refusal to register the MONACO trademark by the Court only relates to certain designated goods and services; the mark has therefore been registered for a large number of other goods and services as stated in the facts of the case, in particular items of jewellery, clothes or catering services.

In addition, it is important to emphasise that this Court Order is likely to be appealed before the Court of Justice of the European Union in regard to the legal question of the distinctiveness of the MONACO mark for the relevant public, for the goods and services concerned.

A decision that will therefore be followed with interest.
Order of the General Court of the European Union, 8th Chamber, 15 January 2015 (case T-197/13)

Applicants often ask how to register their trademarks in China, i.e. in Chinese characters or in Latin script.

It is true that registering a trademark in China in Latin script can form part of a global expansion strategy through an international trademark specifying this country. This strategy can be justified in terms of cost, but also in terms of use, given that in the vast majority of cases, the French product exported to China has more sales force because it is a "French product", and so is marketed under its trademark in Latin script.

However, this reasoning has considerable limits.

Generally, Chinese consumers do not associate the "Latin" and "Chinese" versions of trademarks unless a relationship between these versions is long established by consumers in the country, following long usage or significant advertising.

Consequently, a prior mark in China in Latin script does not generally constitute a priority that can be used to oppose the registration of a second mark in Chinese characters unless, of course, it can be proven that the registration is fraudulent, but meeting all the conditions is not necessarily straightforward.

It is therefore strongly recommended to register your trademark twice in China, once in Latin script and once in Chinese characters. We would refer you to our article of June 2013 available on our website, concerning the protection of your trademarks in China, and on the precautions to be taken in terms of the choice of Chinese translation used.

The Institute for creating and developing (IRCE) companies has invited Nicolas Hautier and Jean-Pascal Decobert to present the main processes and good practices that companies managers should implement to efficiently protect and enhance the value the innovations of their companies.

If you wish to attend this presentation please contact IRCE - Vincent Duclos : v.duclos@irce-paca.com.

Date: October 21th, 2015

Nicolas Hautier and Jean-Pascal Decobert has been invited to present the main processes and good practices that Texas Instrument should implement to efficiently protect and enhance the value of its innovations.

Date: October 1st, 2015

Ségolène LUHERNE and Marie-clotilde SCHIES will attend the 29th Edition of the conference of the MARQUES Association in VIENNA. They will be glad to meet you there.

In the United States, the Patent Trolls thrive for a few years. Indeed, we consider that more over than 50% of disputes in the US are now initiated by Patent Trolls.

European businesses disrupted by Patent Trolls were so far, mainly those that were operating in the United States.

Have Some Patent Trolls crossed the Atlantic or do they come from an endemic species? Still, Patent Trolls clamp down and are now developing themselves in Europe.

It is therefore necessary that companies know how to identify the risks in Europe, how to reduce these risks and how to respond and react when these risks materialize in threat or attack.

Several approaches can be implemented by companies in order to significantly reduce the risk of harm caused by Patent Trolls.

To identify the risks of being threatened by Patent Trolls, companies must, before using a new product, identify whether patents cover these products. This patent monitoring is therefore complementary to the one usually in place to monitor patents published by the competition.

In Europe, once that a potentially embarrassing patent has been identified, we can appeal to use to very effective procedures (third party observations, oppositions) to prevent the grant of a European patent or to revoke it if it has recently been granted.

In order not to attract the attention of the Patent Troll, these procedures can also be conducted so as not to reveal the identity of the company that initiates them. These procedures are also very inexpensive: the filing fee of third party observation is free and the official fee for the opposition proceedings before the EPO is thirty times lower than opposition initiated before the American Office !

Regular monitoring of potentially troublesome patents is particularly important knowing that after a period of 9 months after its grant, a patent can not be opposed to anymore before the European Patent Office.

Among the measures that can be taken in order to limit the risk of being upset by a Patent Troll, can also be provided to:
- adapt its product to circumvent the scope of the protection conferred by the patent. This usually requires the identification of infringement risks sufficiently in advance of the production of the products.
- adapt its logistics, including its manufacturing countries or countries in which the suppliers are implemented. This can be relatively easy to implement and very effective if the country where the goods are finally delivered or used are not covered by the patents of the Patent Troll.
- be able to prove that the technology covered by the patent, had been developed, prior to the filing date of the patent.
- - provide with its suppliers a guaranteed call clause so that they face the consequences of an attack by a patent holder. This type of clause avoids having to pay damages and legal costs. However, it does not allow to continue operating on with the technology covered by the patent, if convicted.
- check whether the product can be attack by infringement, if it has not already been introduced commercially, with the consent of the Patent Troll, in a country of the Economic European Area.

Therefore, there are many procedures to reduce the risk of being disturbed by Patent Trolls. These procedures must be initiated at the earliest moment, well before being threatened by a Patent Troll.

Furthermore, if they cannot guarantee for sure a perfect tranquility, in case of dispute with a Patent Troll, these approaches can significantly strengthen the company's position.
During the negotiation phase with the Patent Troll, we have seen at many times that, once its position consolidated, the company may defeat the Patent Troll inclinations or at least drastically reduce its claims.
In Europe, the weapons available to repel Patent Trolls are sharper than in the United States ... remains that the European patent with unitary effect, that will soon be in force, may unfortunately encourage the proliferation of Patent Trolls in Europe ... (however some solutions are being discussed to avoid that. A next article will present one of these solutions).

Nicolas HAUTIER

MONACO – The pilot phase for implementing a new form for filing trademarks applications.

As part of the modernization of the administration policy, the Economic Development Directorate has initiated a wave of reforms to modernize the administration and make it even more effective.

Among these reforms, the Intellectual Property Division of the Economic Expansion Department is in the process of setting up a new IT tool in order to manage all of the Monegasque industrial property rights and has notably launched a pilot phase of its new filing form for trademark’s national registration.

The dual objective of this new form is to facilitate filing procedures and significantly reduce the time for obtaining a record.

During this phase, our Monegasque firm was asked to use this document and to share any comments, which we have not failed to do with the Trademark Office in Monaco.

Our firm has been for several decades in close collaboration with the Monegasque services of the Directorate of Economic Expansion.

Indeed, our firm has a very good knowledge of the law and practice of the Principality because of its activity in Monaco for more over than 40 years.

Concerned by strengthening this collaboration with the Monegasque Office and Monaco to assist its clients closer to their business, our IP HAUTIER entity is now located in the district of Fontvieille, in the same street as the Patent and Trademark Office in Monaco.

We will certainly keep you informed of the final validation of the new trademark application form in Monaco.

Marie-Clotilde SCHIES

The two main contributions of this industrial property law matters are as follows:

1 - The creation of a new category of geographical indication: the protected geographical indication on industrial and artisanal products (IGPIA).
Manufactured products can now be protected through designations of origin.
Thus Article L721-2 of the French Intellectual Property Code defines geographical indications as "the name of a geographical area or a specific place used to designate a product, other than agricultural, forestry, food or from the sea, from where it is native and that has a specific quality, reputation or other characteristics that can essentially be attributed to its geographical origin."

The law specifies that a particular specification, notably containing the product concerned and its various features will have to be established. The INPI will have to approve said specifications. The approval decision will then be published in the Official Bulletin of Industrial Property (BOPI).

The law also provides the relationship between the geographical indication on industrial and handicraft products with brands. Thus, geographical indications constitute prior rights to a trademark (art L711-4d the ICC) and may in some cases be required to coexist with marks (L713-3 art ICC).

2 - The introduction of enhanced protection of the names of local authorities and public establishments for Intercommunal Co-operation.

This is to be seen in particular in two aspects:

- The possibility for a local authority or EPIC to oppose the registration of a mark in the case of damage to its name, its image or its reputation (art L712-4 of the CPI). Until now, the only way was to form a legal action.

- The possibility for a local authority or EPIC to ask the INPI to be alerted when filing an application for registration of a mark containing its name. This is a real exception to the French system because the INPI had not, until now a standby role.

These provisions are the result of the Laguiole particular case that notably rejected the common actions brought against Laguiole trademark holders.

However, they leave open, in the absence of implementing decrees which were nevertheless expected for the summer 2014, many questions and uncertainties.

It is therefore strongly recommended at this stage to take all necessary precautions which implies in particular for local authorities to submit their name as a brand and establish brand monitoring.

The 17th March 2014 Law No. 2014-344 on the consumption.

Ségolène LUHERNE

The Institute for creating and developing (IRCE) companies has invited Nicolas Hautier and Jean-Pascal Decobert to present the main processes and good practices that companies should implement to efficiently protect and valuate their innovations.

Date: October 23rd, 2014

The French Patent Office INPI has recently published the 2013 Palmares of the biggest patent depositors in France.

The Patent Club « Club Action Brevet » is organizing a special evening upon the 2014 summer return.

The Club Action Brevet meeting will be held on September 18th, 2014 at 5.00pm and will focus on the following topic:

“Infringement: Act quickly and effectively, practical applications for the SME’s”.

Segolene Luherne and Jean Pascal Decobert will be attending this meeting and will provide their expertise on the topic.

This meeting is organized by the CCI (Chamber of Commerce and Industry) and Mr José Fiotti will lead this presentation. The registration is free via the following link :

https://newdeal.cote-azur.cci.fr/participation_evenement.fl?eventCode=201407-870&utk=01417a9d&dummy=true

We are looking forward to meet you !

On July 2014 the 4th, the European Patent Office (EPO) represented by its president Benoît Battistelli, and Tunisia represented by its Minister of Industry, Energy and Mines, Kamel Ben Naceur have signed an agreement on the validation of European patents in Tunisia. The agreement has to be ratified before it can enter into force.

This agreement echoes to the previous draft on “Validation Agreement” between Tunisia and the European Patent Organization that was written on October 8th, 2012. In this previous project, the administrations were reminding that the EPO and Tunisia were already strongly linked to the issue of industrial property. Indeed, Tunisia, as a member of the Patent Cooperation Treaty (PCT), chose the EPO as the Authority for International Searching and International Preliminary Examining under this Treaty. Even more, Tunisia had been requesting assistance from the EPO for the establishment of a system of effective patent protection. Finally the EPO is now training INNORPI examiners in prior-art searching and in drafting written opinions on the patentability of the applications filed.

In this regard the agreement signed on July 4th, 2014 just endorses an already extensive cooperation between the two administrations.

According to the terms of the agreement, European patent applicants and proprietors will be able to validate the legal effects of their European patents and applications on the Tunisian territory, even though Tunisia is not an EPO member state. Validated European patent applications and patents will have the same legal effect as Tunisian national applications and patents, and will be subjected only to Tunisian patent legislation.

The agreement signed on July 4th, 2014 not yet published, makes it too early to draw all the consequences and notably to know as of when the European Patent Application will be validated in Tunisia.

Economic actors reproach very often to our precious politicians a tendency to not take into account the international environment in their government’s strategic decisions and development in France.

With regard to industrial property, is there also a lack between the choices of the French “hexagon” and the other countries?

A recent trip in Asia to visit the agent’s part of our network of attorneys in intellectual property allowed us to consider this issue with great caution.

By taking the example of Taiwan, we note a very strong dissymmetry between the number of patent and trademark applications filed by Taiwanese companies in the United States of America, and/with the number, sometimes 10 times less, of applications filed in Europe. One of the reasons given by the applicants is that the risk of heavy litigations is largely higher and highly more expansive than in Europe, so there is a need, to keep it under control, to have defensive patents, likely to be used to counter-attack.

Another important lesson is the growth of patents applications filings in China. With a cost generally more limited than the USA, a granting process less specific, the Asian applicants have now understood the concern of the industrial property on this huge market.

Of course, the Asian companies would be right to reevaluate their patent applications filing on a geographic (repartition) scale taking into account the advent of the New Unified Court of Patents in Europe that will allow litigations actions more centralized and to (financial) supranational consequences in the heart of the European Union. But the French companies should also get inspired of the Asian countries’ strategy, with frequent American patent applications and take into account the fact that China is no longer simply the place of production of infringing products and that an active protection in this country is a pledge for the future of a company.

Jean Pascal DECOBERT

The USA is historically friendlier to patentability of computer implemented inventions than the European Patent Office. We must remember that methods or systems implementing computerized means can be patentable. In Europe, it shall be demonstrated that the invention’s contribution is technical in nature and non-obvious in comparison to prior art. In the USA, technicality is not systematically a criterion taken into consideration by the USPTO and the courts. And USPTO has had a trend to welcome widely computerized innovations in the 90’s, in particular after a decision known under the following name “ State Street Bank”, including creations mainly based on business methods or on abstract intellectual considerations. A decision of the Supreme Court on the case BILSKI slowed down this very permissive trend. But it did not allow to respond very clearly on practical assessments of patentability for such inventions. Notably, a method with abstract content and that has for technic the sole use of very ordinary computerized means (processors, servers, computer memories) would be considered out of proper patentability or not ?

The Supreme Court has been tackled again in order to respond shortly to this matter. In this case, the Company Alice Corp. is the proprietor of four American patents. These four patents have specific features in their own invention which the heart beating of invention is based on financial methods.

The use of technical means quoted in the claims of the said four patents does not beyond its ordinary aspect (“data storage”, “input means”…); one of the patents US6912510B1, being, in its claim 1, mostly lacked of computerized technical means. These patents are in the middle of litigation with the Company CLS bank International which contests their validity.

With a non-doubtful success in first instance, the Columbian District Court invalidating these patents based on the argument that there are only focused on abstract ideas excluded from patentability according to the article 35USC101 of the American code.

But the Supreme Court has welcomed a CLS’ application to review this matter. Indeed, behind this litigation, one matter remains which is to find out whether for those specific inventions that mix up the concrete/technical and also abstract aspects, if patentability can also be welcomed even if the technical aspects are without any real interest. This case shows us that patentability of “business methods” is a matter not yet stabilized and deserves for the concerned bodies, extreme caution. The audiences before the Supreme Court are now over and a decision is expected for the coming month of June. To be followed…

Jean Pascal DECOBERT

This 13th February, the French National Assembly adopted without modification the ratification of the agreement regarding the Unified Patent Court (UPC).

This draft bill allows for this competent jurisdiction to deal with all litigations based on the (future) European Union Patent (European patent with unitary effect) and to deal with all litigations based on the European patents as they have existed over the last 40 years.

Whereas European patents once granted by the European office of Patents are divided into a bundle of individually enforceable patents within each country chosen by the proprietor, the patent with a unitary effect, once granted by the EPO, will be enforceable throughout an undivided 25 member state block of the European Union.

The Unified Patent Court can then pronounce decisions notably regarding the validity of European patents and of European patents with unitary effect granted by the EPO but also regarding cases of infringements.

The vocation of all rulings pronounced by the Unified Patent Court is to be applied throughout all territories of the European Union.

The first instance of this jurisdiction will be made up of a central division having its head office based in Paris with sections in London and Munich for specific technical fields.

To date there are still many outstanding issues, including issues related to the cost for maintaining in force a patent with unitary effect throughout the payment of annual fees and distribution between Member States of the generated income. These issues are being hotly debated among member states. The answers to these questions are, however essential to determine accurately whether, for a given project, it is better to opt for new European patent with unitary effect.

Nicolas HAUTIER

Chinese courts usually have a bad reputation as to their impartiality from a European point of view. It is true that cultural differences also exist in the industrial property field, especially in assessing the illegal nature of commercial practises.

Added to this are the specific legal measures in the field of intellectual property that may have jolted the habits of businesses in Europe. One can note the infringement foreclosure measures if the patent infringement has been tolerated for more than two years. Or again, the application of the so called international exhaustion doctrine: the owner of a patent cannot prohibit imports of a product they have manufactured or authorised in foreign countries into China, thus reducing the scope of limitations to importing technological products into China.

Finally, the Wenzhou court ruling in 2007, in which Schneider, the circuit breaker manufacturer, was found to be in infringement of a Chinese utility model that was only a pale copy of its own patent, profoundly marked by its obviously inequitable aspects.

This last jurisprudence is perhaps, nevertheless, a marker showing that there is currently a transition towards greater respect of intellectual property: thus, the utility model that tripped up Schneider would currently be simply cancelled due to a significant change in the law in determining the newness of an invention.

There are other signs to support this. The number of infringement proceedings has exploded (+284.2% since 2008 before the local jurisdictions), leading to judges having increased practical skills. A large majority of the proceedings (over 90%) are between Chinese companies, such that the scope of patent rulings is much less connected to a protectionist policy.
One can therefore expect greater respect for industrial property rights in China via infringement proceedings.

There is also increasing interest from Chinese companies, as they have recently become ambitious applicants for patents and brands, and they now need to be able to protect their rights effectively.

The club dedicated to patent practice named as “Club Action Brevet” is organizing a meeting according to the following topic: “Innovation Tax Credit (ITC), the research Tax Credit (RTC) and the status of the Young Innovative Company (YIC) regarding the 2014 financial law.

This conference organized by the French Chamber of Commerce and Industry (CCI) will be held on Thursday 27TH March from 8.30 am till 10.00am.
Please find the schedule below:

“This conference will provide further details on the new measures of the 2014 financial law that gets companies interested in to it :
- Business support
- Government’s ambition to reinforce taxation on big businesses
- Small business see their tax regime adapted

Our experts will both focus on the IPC, on the RTC and on the status YIC as well as devices offered by the Intellectual Property Office regarding innovation for Young Innovative Companies: support on loan arrangements.

This conference will be held by:
Delphine GARCIA, Chargée d’Affaires at IPO France
Aldric AUBRY, Senior Accounting Consultant at KPMG.
You will also be able to meet members of the HAUTIER IP law firm.

Address of the conference:
Métropole Nice Côte d’Azur Centre Européen d’Entreprises et d’Innovation
Nice Premium – Rdc Espace Open Soft
1, bd Maître Maurice Slama – 06200 Nice

On February 13th, 2014, the French National Assembly adopted without modification the ratification of the agreement regarding the Unified Patent Court.

Jean-Pascal Decobert will attend to the next Monaco business Forum as one of the speakers of the first conference of the venue. The discussion will focus on : Intellectual property assets : what challenge for your firm ?

See you on October 16th, at 10h30 at the Auditorium Rainier III.

Monaco Business is :
- A trade show designed to strengthen the B2B community in Monaco,
- A showcase of the top Monaco companies but also the most efficient SMEs,
- Keynotes made by leading entrepreneurs, to learn and be inspired,
- Workshops led by experts, for the latest trends and best practices,
- Networking and Speed Business meetings to identify synergies and new business prospects.

Meet up with us at Marques Congress!

On October 17-20 2013 we will attend the Marques’ annual meeting, which will be held in Monaco.

This meeting is of particular importance for us since we are deeply involved in the representation before the Monegasque patent and trademark office.

The theme of the meeting is: Who is running the Show. It will go into issues such as trademark enforcement, free speech limitations, the impact of new top-level domains, updates on OHIM, WIPO and recent EU case law developments.

Please contact contact@hautier.fr if you want to meet us there.

The information below is especially for possible patent applicants in France or in Europe who are seeking patent protection in TAIWAN.

Taiwan has not signed the PCT
Taiwan is not a party to any international treaties on patents such as the PCT or the Paris Convention. It is therefore impossible to make claims under these treaties. On the other hand, it is always possible to make an equivalent priority application in Taiwan during the 12 months following an application in France or Europe.

Accepted language
Patent applications in Taiwan can be made, in the event of urgency, in a language other than traditional Chinese, such as English and French. However, a Chinese translation using traditional characters must be provided within four months of the application for a Taiwanese patent. The quality of the translation is essential. Examination procedure The TIPO (meaning "Taiwan Intellectual Property Office") only makes a substantial examination of an application within three years of the date of the said application.
Further, compared to the French or European procedure, the TIPO does not make a distinct research report on official letters.
TIPO has increased its efforts to maintain an acceptable waiting time for applicants. During the examination phase, a first official letter is issued from between 15 and 28 months following the application date to TIPO, whereas the average duration of the patent issue procedure is between 18 and 36 months, which is rather less than the usual duration in the European Patent Office.

Fast tracked examination
TIPO only fast tracks the examination on request from the applicant. As soon as the applicant receives notice from TIPO informing that the application is ready for examination, they can request the acceleration of the procedure. Further, if the patent application has not yet been published, anticipated publication is required. The fast track examination tax is reduced, as is the anticipated publication tax.
During a fast track examination, a first official letter is issued within 4 months, and the result of an accelerated examination is issued within 9 months.

PPH Programme
The "Patent Prosecution Highway (PPH)" programme applies between TIPO and USPTO, as well as with JPO (Japanese Patent Office).

To conclude, patent protection in Taiwan should be envisaged through national channels, and has specificities that must be understood. Currently the procedure has become quicker and more effective.
By combining a fast tracked examination by TIPO, and the PPH procedure, the procedure for issuing an American or Taiwanese patent can be significantly accelerated, and procedure costs can also be reduced for a European applicant.

For quite some time, brand owners have been asking themselves whether registering their brand in China has any interest.

China is an unavoidable economic player, it has signed the major international agreements on industrial property and has its own brand legislation. The legislation currently applicable was passed in 1982, and amended in 1993 and 2001.

As soon as a product or service is destined for China (manufacture, distribution, exhibition, etc.) it is strongly recommended to make an application that is legally binding in the country, thus giving its holder the exclusive right to use the brand and to prevent anyone else from using it.

Often, prospective applicants hesitate to register brands in China because they believe that they will have difficulties in taking legal action in this country to uphold their rights. This is most certainly true for many applicants in many countries. In China, however, opposition proceedings are possible (administrative procedure in which opposition is made to the registration of a brand that is identical or very close to the original, for identical or similar products) and are widely used by brand owners who are very often successful.

Registering a brand in China must be completed as soon as possible, and before any publication in the country, in order to avoid any risks. The registration should especially be completed before any participation in any trade shows in Asia, which is a hotbed for those practising infringement, who are there to find out about western brands that are destined for the Asian market.

Several registration procedures are available, especially:

• Registering an international brand in China, based on your national brand
This procedure is relatively cheap, but the registered brand will be the same as in your country of origin, and therefore will most certainly be in Latin characters. Even though necessary, such protection is often insufficient


• Registering a national brand in China using Chinese characters
One should be extremely attentive as to the characters used for the registration. This task is difficult for a westerner. One can ask one's local distributor to provide a Chinese translation for the brand, but it is strongly advisable to make the same request to a third party at the same time, as several translations are possible with different meanings. Our firm is lucky enough to have a native Chinese speaking industrial property expert to overcome these practical issues.

It is best to obtain several protections, one in Chinese characters and one in Latin characters. It is often recommended to complete several registrations in Latin characters: one in a verbal form and the other as a logo. In fact, unscrupulous infringement specialists sometimes only seek to copy the visual elements while changing the verbal element.

To conclude, obtaining registered brands in China is relatively easy on condition that you have working knowledge of rules and practises, because brand legislation in China, both for registration procedures and protection, contains many specificities compared to our brand legislation - for example the examination by the department that also includes the consideration of availability, single-class registration, invalidation for failure to use possible after three years, the consideration of the Chinese language and especially its phonetics to appreciate the validity conditions of a brand, etc. – but its protection is essential in many cases, it being understood, of course, that the brand is registered in your name, and not the local distributor's name.

For quite a few years now, Asian companies have been using effective coercive means to force companies using their brand to reserve domain names with Asian extensions.

This type of blackmail is a widespread scam designed to mislead customers and sell unsolicited services.

If your company has interests in Asia over the short or medium term, reserving domain names using
.ASIA and with the local extensions of the places you are present in (e.g. .CN in China,
.HK in Honk Kong, .JP in Japan) has a true interest, both legal and financial.


This action is both preventive, because it stops third parties from reserving the domain names you are interested in, and because it gives you a good public image in Asia, these extensions being very sought after for commercial relationships.


From a financial point of view it is more advantageous to reserve these domain names rather than having to undertake retrieval proceedings and/or purchase operations which are often long, uncertain and expensive.


We therefore recommend that you consider reserving these domain names if your company has a true commercial interest in the countries in question, if you already own brands in these countries and/or if these countries present a cybersquatting risk.
You should be aware that .ASIA is attached to the 73 countries of the Dotasia Community (Pan-Asian and Asia-Pacific community), and that it is reserved for private and legal persons having at least one contact (owner, administrative, financial or technical) with an address inside the Asian zone.
We are at your disposal to provide any further information you may require in this field.

The INPI and the Chamber of Commerce has invited Nicolas Hautier to share his experience and advices regarding the valuation of IP rights. He will also detail the various strategies to reduce the risk of infringement attacks from third parties, with a focus on patent trolls.

We would be delighted to meet you during that conference.

Date: September 24, 2013

The Institute for creating and developing (IRCE) companies has invited Nicolas Hautier and Jean-Pascal Decobert to present the main processes and good practices that companies should implement to efficiently protect and valuate their innovations.

Date: September 27, 2013

The INPI and the Incubator PACA EST has invited Nicolas Hautier to share his experience and advices regarding the protection and the valuation of innovation related to IP matters in the information and telecommunication industry.

A special focus will be made on computer implemented inventions.

We would be delighted to meet you during that conference.


Date: Mars 8, 2013

Naturally, the financial value of a patent depends to a very large extent on parameters related to the patent itself, to the technological sector, to the position of the vendor and to the position of the acquirer, and to the reason for the valuation (sale, increase in capital, financial audit by an investor, succession of a company, etc.).
Various valuation methods are usually used in order to converge towards a pertinent valuation and in order to take the context of the valuation into account.

Among the valuation methods usually used, the main methods are based on:
• analysis of future licence-fee revenue;
• analysis by comparison with previous transactions;
• analysis of the historic costs.

These analyses take account of numerous coefficients reflecting the intrinsic value of the patent (soundness of the patent in standing up to proceedings to have it declared void, difficulty of finding ways round the patent, territories covered, match between the territories covered and the territories in which the technology is/will be strategic, significance of the patented technology in the product, capacity to detect infringement, capacity to prove infringement, economic risk if the valuation is based on yield projections, remaining life of the patent, etc.).

It should also be noted that a patent sale is increasingly accompanied by other commitments such as disclosure of know-how, such commitments often being made in consideration for some fraction of the amount of the transaction.
It would therefore be very rash to give an average price per patent. However, in practice, we observe that the average price of a family of patents is often a few hundred thousand euros.
This price often exceeds a million euros in fields in which the product is based to a large extent on the patent, and/or in fields in which the products have high added value.
In recent transactions involving several thousand patents, the final price is also an average of several hundred thousand euros per patent family.

Very recently, for example, 1,100 patent families from the Eastman Kodak Co. portfolio were sold for 525 million dollars, i.e. 477,000 dollars (€395,000) per patent family. Those patents related to acquiring, processing, and sharing digital images.

For portfolios of more reasonable size or for one or more patent families, the acquirer will look much more carefully at the value of each patent. A few precautions should then be taken in order to optimise the value of the portfolio.

In particular, it is preferable to propose to the acquirer more than one country covered by the patent, or even better, to offer the acquirer the possibility of protecting themselves in the countries of their choice. This is possible if the vendor has filed a PCT patent application, and if the sale takes place fewer than 30 months after the first filing. In addition to leaving the acquirer free to file in 146 countries, filing a PCT application enables the vendor to limit the costs of filing abroad and to have them borne by the acquirer.
In addition, particular care should be given to drafting the patent in order to optimise the scope of the protection and the soundness of the patent.

In addition, since the capacity to prove infringement is based to a large extent on the claims, the quality of their drafting will also be an important element in enhancing the value of the patent.

It is, however, interesting to note that the example of this sales price is well below the estimate given by 284 Partners LLC. That estimate was $2.6 billion dollars, i.e. about 5 times higher than the actual sales price (2.4 million dollars per patent). The very difficult situation of Eastman Kodak, in bankruptcy, definitely worked against it and probably explains in part the shortfall between the amount of the estimate and the amount of the transaction.
Other recent transactions or valuations of major portfolios of patents show an average price lying in the range $400,000 to $800,000 per patent family (i.e. in the range €300,000 to €600,000).
The size of these portfolios, comprising several thousands of patents, precludes valuation of each patent family, since the duration and cost of the valuations would then be prohibitive.
The valuation is then often focused on a few families that are deemed to be strategic, on the size of the portfolio, and on the already established licence revenue.

Our economic and commercial approach could lead us to think that whenever an instructing party has ordered and paid for a feasibility study, they are automatically owner of the rights stemming therefrom, and, to that end, are entitled to file a patent application.

And yet that is not so, as a decision of the Court of Appeal of Paris dated 12 October 2012 has just reminded us very clearly. In that case, a company ordered and paid for a feasibility study from a third company on machining star-shaped relief in centrifuge tubes, and then filed a patent application relating to the results of that study even though the contract of order did not have any clause about ownership of the rights.
The Court of Appeal, after establishing that only the company who conducted the study showed inventive step, ordered the patent to be transferred to the benefit of that company.

Payment for a study by an instructing party is thus not sufficient to lead to automatic transfer of the rights to the instructing party.

The judges are thus applying strictly Article L611-6 of the Intellectual Property Code whereby the right to a patent belongs to the inventor or to their assign.

Transfer or assignment should be expressly provided for contractually in order to avoid subsequent difficulties.

Legal certainty thus implies taking all necessary precautions in drafting contracts.

After being in the pipeline for some years now, the CPC (Cooperative Patent Classification) has just appeared in the interfaces of patent agents who need to search patent publication databases. It is a classification developed jointly by the European Patent Office (EPO) and by the US Patent and Trademark Office (USPTO).

Patent classifications serve to enable Patent Offices to sort patent applications and patents into technical fields. The classes are defined precisely but with all the difficulties that can be imagined: what class to choose for a complex technique? How to update the classes depending on technical progress? How to update the patent classifications when the classes change?

The CPC is a recognition of European know-how in classification because the CPC is based on the European Classification ECLA. It is also a sign of international harmonisation that will facilitate the lives of patent professionals and, from the viewpoints of the EPO and of the USPTO, it represents pooling of their efforts.

We should remember that patent publications are powerful sources of information on the state of the art in all technical sectors. They are very useful during project development, e.g.:
• for seeking technical solutions that are free of rights or to be licensed;
• for assessing the patentability of innovations; and
• for detecting the activities of competitors and the risks of infringement.
It remains to access this information effectively, taking into account the millions of available patent documents. Admittedly, professionals have search engines that are more effective than web tools with unrestricted access, and their knowledge enables them to input the best search strategies, and to find their way through complex information (patent application publications A1 or A2 or A3, patent publications B or B2, patent families, translations, statements of maintenance in force...). But the uncertainties of patent classification remain a difficult point for which the CPC will constitute genuine progress.

Filing a trademark registration application in France with the INPI (the French Patent and Trademark Office) is not a mere formality with no consequences, and it requires prior precautions and prior thought.

Firstly, you need to check that the name or the logo to be filed does not infringe on the prior rights of a third party. Such pre-filing checks require searches to be made for priority among identical and similar trademarks, among identical corporate names, and among identical domain names.

Once the draft filing has been validated by the findings of such searches, you need to determine the best filing strategy: should you file a word trademark or a word-and-device trademark, should it be in black and white or on in colour, and in whose name or in the name of which company should it be filed?

One of the major aspects of the application to be filed also lies in choosing the wording for the description of goods and services for which you wish to claim protection for your trademark.
Here too, it is essential to determine precisely which goods and services to list, naturally based on the business of the applicant on the date of filing, but also on how its business is likely to develop in the short and medium terms, on the business of competitors, and on the potential risks revealed by any priority searches conducted upstream.

These stages for thinking things through are essential to properly filing a trademark and to anticipating any obstacles to it being used freely.
The fees charged by a Trademark Attorney for filing a trademark and for handling renewing it at the due date are generally, on average over a 10-year period, about €30 exclusive of VAT per year.

So it’s well worth it!

World Intellectual Property Organisation (WIPO) communicated its statistics for 2011. These statistics principally relate to the system of international patent applications (PCT applications), the system which is used by patent applicants to protect their technologies outside their country of origin.
As these PCT applications reflect the desire of companies to protect their technologies outside the borders of their countries of origin and therefore to conquer foreign markets, these statistics offer a revealing and very interesting vision of the existing and future forces on the global scene of technologies and more general of the economy.
Here are some of the facts which we found to be of particular relevance.

Global trends:

In spite of the economic downturn which has affected many regions in the works, the number of PCT applications rose sharply in 2011 (by more than 10%) to reach an all-time high of approximately 180,000 applications filed. 2011 was also the year in which the two millionth PCT application was filed since the PCT system started in 1978.
This increase in the number of PCT applications is of course largely due to applications from rapidly developing economies such as China but also from countries with more stable economies such as Japan or, to a lesser degree, the United States and Germany.
The ranking of countries with regard to PCT applications is as follows:
The United States with 48,596 PCT applications
Japan with 38,888 PCT applications
Germany with 18,568 PCT applications
China with 16,406 PCT applications
Korea with 10,447 PCT applications
France with 7,664 PCT applications
The United Kingdom with 4,844 PCT applications

Therefore, the United States remains significantly in the lead with regard to PCT applications. With approximately 50,000 PCT applications in 2011, the United States filed as many applications as the rest of the world put together, not including the 4 other biggest applicant countries (Japan, Germany, Korea and China).
However, the supremacy of the United States appears to be significantly diminishing. It faces stiff competition from several other countries, all of which in Asia. For example, while Japan filed 50% less PCT applications than the United States 4 years ago, this gap was reduced to only 20% in 2011. As for China, it filed ten times fewer PCT applications than the United States in 2007 as compared to only three times fewer in 2011.
Other countries with rapidly developing economies have seen a rise in their number of applications with rates in double figures. This is the case for Brazil (+17.2%), Turkey (+12.7%), and India (+11.2%). However, it is noted that in spite of this increase, India still remains far behind its regional rival China with twenty times fewer PCT applications.
Although China has shown an incredible performance with regard to PCT applications, upon closer examination it appears that these applications are not being made by a large number of Chinese companies, but only by a handful of the “heavy weights?.

Another notable development is that it is now in the United States and no longer in Europe that the greatest number of national phase entries are made (these are applications made on the expiry of the PCT application, generally 30 months after the first application). This trend reflects the desire of non-American companies to protect their rights on the United States territory. This trend is very probably due to Asian companies, as, on the one hand, as described above, they file more PCT applications and, on the other hand, they often give priority to protection on the American market rather than on the European market. The appeal of the American market ahead of the European market is also regularly expressed in the exchanges we have with the partners in our Asian network.


Performances in France:
Among the 50 biggest PCT applicants in the world, the first French applicant is Thomson Licensing which ranks 46th with 303 PCT applications filed in 2011. The second biggest French applicant is Alcatel Lucent, in 48th place with 287 PCT applications filed in 2011.
A positive note for France: 2 of the 3 biggest applicants in the “research institute? category are French. The CEA and the CNRS rank respectively 1st and 3rd with 308 and 207 PCT applications filed. Unfortunately, the same good performance is not seen in the “universities? category, as no French university or school appears among the top 50 world applicants, with this category being dominated by American universities.
The differences in the performances of France in these two categories (research institutes and universities) is perhaps not very surprising and is due at least partially to the organisation of public research: it is fairly concentrated for public institutes and laboratories (CEA, CNRS, INSERM) and very fragmented with regard to the myriad of universities and university laboratories. Inversely, American universities are generally very large structures which generate a volume effect and which have high global visibility.

Performances in Europe:
The figure which is the most remarkable concerning the European zone, in our opinion, does not concern the number of PCT applications but the number of European applications filed by Chinese companies as compared to European companies.
In 2011, the number of European patent applications made by Chinese companies largely exceeded those made by French companies (by more than 50%), by Swiss companies (approximately twice as many) and English companies (approximately three times as many). Only Germany remains ahead of China with respect to the number of European applications filed (approximately twice as many).
This means that on the European territory, i.e. on the first market for most French companies, the Chinese companies will be in a dominant technological position unless there is a reverse in the current trend.

These statistics relating to PCT and European applications clearly show the situation we currently face with respect to patents: Asian companies, Chinese for the most part, after having first consolidated their positions in their own countries, have now embarked upon a phase whereby they are protecting their technologies on the Western markets in order to better penetrate and get a foothold in these markets.

Nicolas HAUTIER

Even the lay media have told the story of how this new industrial property document has come into being. We should remember that the principle is not new in itself because the community patent was already defined on establishing the European patent. But the least that can be said is that the difficulties of European negotiations have delayed rolling it out. The avowed aim of the unitary patent (it is not a community patent because Italy and Spain are not taking part) is to rationalise the procedure before the Office and to globalise management of disputes. The compact and unitary nature of this patent is an undeniable advantage.

The European patent as we know it has other specificities, in particular by having a wider choice of territories (including Italy, Spain, and extra-community territories) and greater flexibility in the choice of the countries to be protected.

This new offer, which should come into effect as of 2014, deserves new attention from patent applicants in order to determine the procedure channel that is best suited to their strategy.

Today, the European Parliament has approved the draft of regulation on a unitary patent for Europe.

The draft regulations were accepted under the EU's legislative procedure referred to as enhanced co-operation.

All EU member states excepted Spain and Italy have joined the enhanced co-operation procedure to create a unitary patent protection for their territories.

The regulation will apply from 1 January 2014 or the date of entry into force of the Agreement on a Unified Patent Court, whichever is the later.

Nicolas Hautier and Jean-Pascal Decobert will attend the AIPPI Congress in Seoul from October 19 to October 23rd.

We will be pleased to meet you there.

Jean-Pascal Decobert has been invited by the CLUSTER SCS to share his experience and advices regarding the consortium agreements.

This conference will be on October 22nd, at the CICA, Sophia Antipolis.

Please, feel free to contact the CLUSTER for attending this event.

The Incubator Telecom ParisTech has invited Nicolas Hautier to share his experience and advices regarding the protection and the valuation of innovation related to IP matters.

A special focus will be made on computer implemented inventions.

Date: November 7, 2012

Providing the best service at the right cost is a leitmotiv that calls for an optimized international network of IP professionals.

Nicolas Hautier and Jean-Pascal Decobert will attend to 43rd world congress of the AIPPI in this perspective. This event is an opportunity to reinforce our relationships with foreign attorneys so as to update our knowledge about legal initiatives and caselaw worldwide. This is also a special moment for improving our daily cooperative work with agents in charge of cases we handle for our clients.

Professionals: please feel free to schedule a meting with us in Seoul!
IP users: do not hesitate to request any information we will obtain during this congress!

Although patent licence agreements in consideration of royalties are the first to spring to mind for this type of intercompany agreement, they are not the only agreements which can be used. Here is a brief overview of the possibilities and a few figures which challenge popular thinking in this regard.
Firstly, although patents represent the method most used to protect technical know-how, one must not overlook the value of the company’s unpatented know-how. Communication contracts may be concluded on the basis of this know-how. Even with regard to patents, there is a broad range of contractual possibilities: licences in consideration of fees based on exploitation or fixed fees, exclusive or non-exclusive, patent transfer instead of a licence. An increasing number of agreements also bring together patent licences and the communication of know-how.
A few figures, based on the work of Thomas Varner (Economics Incorportated in San Francisco) on the transfer of technology in North America, show the types of agreements being used:
56% of agreements are mixed (patent and know-how licence agreements) which means that agreements which are strict patent licences are not most common (33%); patent assignments represent 11% of all the agreements studied.
50% of agreements provide a financial consideration in the form of royalties and flat-rate fees; 33% of those granting licences request only royalties.
A large majority of agreements with royalties base these royalties on a proportion of the turnover made on the transferred technique, which generally appears to be the most reasonable solution for the parties.

The above figures show that the key to a successful transfer of technology is a sound understanding of the multiple possibilities offered to those negotiating and drawing up the agreements in question.

Jean-Pascal DECOBERT

Although it is possible to protect the appearance of a product under a design or model, the design or model in question must fulfil the double cumulative condition of being new and having individual character as set forth in Article L.511-2 of the Intellectual Property Code (IPC).

1) Novelty (Article L.511-3 IPC)
“A design or model shall be considered to be new if, on the date of the filing of the application for registration or on the date of priority claimed, no identical design or model has been disclosed. Designs or models shall be deemed to be identical if their features differ only in immaterial details."
To be valid, a design or model must therefore be entirely new. This means that no identical design or model has ever been disclosed. Although the Code sets forth the requirement for disclosure to the public, the place, date and author of such disclosure is irrelevant.
However, the Code provides exceptions, and in particular disclosures made under conditions of secrecy and auto-disclosure made by the creator himself, when they takes place within the 12-month period prior to the filing of the application or date of priority claimed (cf. Article L.511-6 IPC).
It should be noted that the burden of proof concerning the existence of a previous design or model lies with the person challenging the newness of a design or model.

2) Individual character (Article L.511-4 IPC)
“A design or model has individual character if the overall visual impression it produces on the informed observer differs from that produced by any design or model disclosed before the date of the filing of the application for registration or before the date of priority claimed.
In assessing individual character, the degree of freedom of the creator in developing the design or the model shall be taken into consideration."

To assess the individual character of a design or model, it should therefore be determined who is the informed observer, the overall visual impression produced by the designs or models in question and the degree of freedom of the creator, it being noted that this degree of freedom is aimed at balancing the overall impression produced by two designs or models according to technical or commercial constraints.

These notions have been clarified by courts in various judgements handed down, both at a national and European level.
In this regard, the European Court of Justice recently defined the notion of “informed user" as an intermediary notion between the average user (which applies with regard to trademarks) and skilled persons (experts). It is therefore a user with particular vigilance, “informed" inasmuch as he has a certain degree of knowledge (ECJ, 22/11/2011, PepsiCo ruling).

Marie-Clotilde SCHIES

Among the many questions which anyone wishing to file a trademark should first ask themselves, this is one of the most important.

In this regard, it should be noted that a trademark may be revoked if it is not used within a period of 5 years following the publication of its registration.
This means that the trademark must be exploited as it was filed.

However, it is difficult to know under what visual identity your trademark will be exploited in 5 or 10 years, as marketing and communication factors are constantly changing. As a general rule, the verbal element remains the same but the logo evolves significantly, as shown by a great number of examples.

It is therefore recommended, for better legal security, to make two separate filings; one in verbal form and one in the form of a logo. The filing made in verbal form must be renewed in order to retain this right. However, the filing in the form of a logo does not have to be renewed if it is no longer exploited and a new filing may be made for any subsequent modified logo. The date on which its protection starts to run shall therefore be later than the filing made in verbal form.
It should be noted that this strategy is insufficient to guarantee the effective protection of your rights. Numerous legal decisions now consider that in the event of multiple registrations, the use of one registration is not deemed to be the same as the use of another registration, even when there is a registration in verbal form.

This is why it is highly recommended to use your trademark in its verbal form at the same time as the new logo filed.

Ségolène LUHERNE

In 2009 the Bundesgerichtshof (BGH) brought before the CJEU (Court of Justice of the European Union) an interlocutory question dealing with a patent which related to a method for manufacturing brain cells using embryonic stem cells.

The case involved Greenpeace against Doctor Oliver Brüstle, who was granted a patent in 1997 relating to isolated and purified neural precursor cells, produced from human embryonic stem cells and used for the treatment of neurological diseases. The clinical uses of such cells are already known, mainly in patients who suffer from Parkinson’s disease.
The Bundespatentgericht (BPG) had decided that the patent was against public order and good morals since implementing the method involved the destruction of human embryos, in this case blastomeres. The applicable legislation is Article 6c) of Directive 98/44/EC, which bans the patenting of all uses of human embryos for industrial or commercial purposes.
The decision of the CJEU in late 2011 offers a legal interpretation of Article 6c) of Directive 98/44/EC, mainly answers the following questions:

a - What is a “human embryo"?? Does this term comprise blastomeres?
The CJEU establishes a difference between the pre-blastocyst and blastocyst stages of embryonic development.
First of all, the concept of “human embryo"? needs to be understood in the broadest sense possible, according to the Court, since human dignity is at issue. In this regard, the Court estimates that “all human eggs must, from the time of fertilisation, be considered to be ‘human embryos’ (…) since fertilisation marks the start of the process of development of a human being"?.
“Unfertilised human eggs in which the nucleus of a mature human cell has been implanted and unfertilised human eggs that have been induced to split and develop by parthenogenesis"?, even when these organisms have not undergone fertilisation as such, should also be classified as “human embryos"?.
The CJEU does not extend its interpretation to the blastocyst stage and estimates that it is up to the national judge to determine, in view of scientific developments, whether a stem cell obtained from a human embryo in the blastocyst stage is capable of triggering the process of development of a human being and therefore falls inside the notion of “human embryo"?.
Thus, the CJEU does not provide any indications to answer the question of whether or not an embryonic stem cell isolated from the blastocyst stage can be considered to be a human embryo, which is excluded from patentability.

b – What should be understood by “industrial or commercial use of embryos"??
According to the Court, any use of human embryos for scientific research that was protected by a patent application would essentially be the same as industrial and commercial use and, thus, should also be excluded from patentability. The exclusion from patentability therefore relates to the use of human embryos for industrial and commercial purposes, as well as for the purpose of scientific research.

Only uses for the purpose of treatment or diagnosis that apply to the human embryo and are useful to the latter may be patented. This would include, for example, correcting malformations to improve the embryo’s chances of survival.

The Court adds that an invention is excluded from patentability when the technical teaching that is the subject matter of the patent application requires the prior destruction of human embryos or the use of same as a raw material, regardless of the stage at which this takes place and even when the description of the method does not explicitly refer to the use of human embryos.

The CJEU thus confirms the position taken by the Enlarged Board of Appeal of the European Patent Office in its Decision G2/06 (dated 25 November 2008).

Allison Delaporte
European Patent Attorney

Mark your calendars! Starting on 3 May 2012 you will be able to register .FR domain names with accents.

A major development in the field of domain names: it is now possible to reserve domain names with accents.

The following 30 new characters are available:

ß à á â ã ä å æ ç è
é ê ë ì í î ï ñ ò ó
ô õ ö ù ú û ü ý ÿ œ

The AFNIC has opted to roll out this change over several stages in order to offer the holders of domain names registered with the extensions that it operates the possibility of pre-empting the internationalised versions of their domain names.

Thus, a so-called “priority registration"? period will run from 3 May to 3 July 2012, during which holders of .FR, .YT, .PM, .WF, .TF and .RE domains will be able to register the variations of their domain names, in other words, the equivalent versions with accents.

The domain name holder

The change will be rolled out for the general public on 3 July 2012 on a “first come, first served"? basis.

The main purpose of this priority period is to protect existing domain name holders against cybersquatting attacks and thus to comply with the global policy for domain name reservation.

Marie-Clothilde Schies
French Trademark Attorney

Cabinet Hautier now has a third French trademark and design attorney specialising in “Trademarks and Designs"?.

The qualification exam certifies a proven track record and major legal expertise in the field of intellectual property. It entitles the holder to represent clients before the French Trademark Office (INPI) and the European Trademark Office (OHIM).

Marie-Clothilde Schies joined the Cabinet two years ago, having working previously at a Paris-based law firm specialising in intellectual property.

Marie-Colthilde Schies has perfect command of the field of trademarks, designs, domain names, copyright and contracts relating to intellectual property in general.


This has allowed Cabinet Hautier to reinforce its team of Consultants and Attorneys, which now consists of three Intellectual Property Consultants specialising in “Trademarks and Designs"? who are also Attorneys approved by the OHIM, two Intellectual Property Consultants specialising in Patents and three Attorneys approved by the European Patent Office, offering a range of services that is unparalleled in the PACA region.

Consequences of the exception of “prior use"? as a defence in infringement proceedings

Our readers already know about the new provisions that are gradually being implemented in the United Sates and are set to profoundly affect American practice in the field of patents.

One major aspect of the reform — also known as the “America Invents Act"? — is the abandonment of the first-to-invent system by which the right to the grant of a patent lies with the first inventor, replacing it with a first-to-file system, which benefits the first inventor to file a patent application for the invention. While the rule (with few exceptions) up until now was that the oldest date of conception of the invention determined who among a plurality of inventors was entitled to a patent for an invention, from now on the patent filing date will be decisive when dealing with possible conflicts.


This change will draw American laws substantially closer to legislation currently in force in the rest of the world and, without a doubt, reduce the complexity of litigation relating to patenting rights. However, it may also affect the ability of the competitors of persons granted a patent to maintain a competitive advantage relating to know-how that may have been acquired before filing the patent.


Let us take as an example the company S, which developed considerable know-how for the production of one of its products and has a highly efficient, precise manufacturing method. We will assume that the company S took great care to preserve the secrecy of its knowledge. And let us imagine that a third party — the company B — conceives the invention of the same manufacturing method in good faith and decides to patent it immediately. The company B will not be affected by the knowledge of the company S, since this knowledge was never made public. It would therefore be possible in principle for the company S to infringe on the patent of the company B.

The exception of “prior use"? was intended for addressing such potential iniquities. The same principle is also applied under other legislations and is often referred to as “prior personal possession"?, for instance in France by virtue of Article L613-7 of the Intellectual Property Code. By comparison, American law has conditions that are sometimes similar and sometimes more particular. Thus, according to the America Invents Act, a person who, in good faith, begins using the invention that is the subject matter of the patent for commercial purposes more than one year before the patent application was filed by a competitor (or the date of first disclosure by the competitor) would not be threatened in the event of infringement proceedings. The specific rules for application of this principle can be found in Section 5 of the new Act. In short, they are very similar to those of the earlier law, but which were only applicable to the field of business methods (this provision was introduced in 1999 to counterbalance the broad admission of the patentability of business methods as a result of the State Street Bank decision).

Legal experts in this sector are well aware of how difficult it is to define the exact scope of this field. The new law at least gets rid of this difficulty, since all business sectors are now included.

Initially an effective defensive weapon, prior use turned out, in our opinion, to be an exception with very limited power.
We will cite the applicability conditions mentioned above in this regard. To this we should add, in particular, the obligation to show prior use on American soil (there is no point in justifying secret knowledge used in Europe), the restricted field covered by secret commercial uses, or even the personal nature of the prior use (it cannot be transferred as such, without transferring the entire business).

To the best of our knowledge, no infringement proceedings in the USA have successfully used this defence mechanism in the past in relation to business methods. The defence relating to prior use is therefore nothing but a — minor — exception that confirms the rule: the patent provides the decisive advantage in most cases.

Decision of the Court of Appeal of Paris
dated 30 November 2011

In order to be accepted for registration, a trademark must be distinctive. This absolute requirement for registration aims to help consumers differentiate products or services without confusing them with similar ones from different sources.

The registration of trademarks that consist of slogans is obviously subject to this condition of being distinctive, and many decisions are handed down in this respect every year.
The principle laid down by the Ruling of the EGC dated 3 July 2003 (case T-122/01, Best Buy Concepts vs. OHIM) is that a slogan is considered to lack this distinctive nature unless it is likely to be perceived by the target audience as a simple promotional formula. On the other hand, such a trademark will be accepted for registration if it can also be perceived as an indication of the commercial origin of the products and services to which it refers.

The Court of Appeal of Paris recently handed down an interesting ruling concerning the registration of slogans as trademarks. This is the ruling of the First Chamber dated 30 November: HPP SARL and WIS (as successor to HPP) vs. ZARA France SARL and INDITEX (Spain).

Jean-Pascal Decobert will be giving a talk on the management of industrial property in companies for the CAPENERGIE cluster


Companies — in particular SMEs and very small enterprises — often lack a strategy for protecting their intellectual property that is supported by a rational internal organisation. However, in order to ensure solid protection, it is essential to have methods in place for managing creations, as well as creators and their secrets.

Jean-Pascal Decobert will explain the methodologies for achieving this to the members of this competitiveness cluster on 14 February 2012.

As part of its partnership with the French Patent and Trademark Office (INPI), the Télécom ParisTech business incubator is organising a conference on software patentability. On this occasion, the incubator has invited Nicolas Hautier to share his experience in the field of software protection, specifically as regards inventions implemented by computer.

The talk is scheduled to take place at the CICA (International Centre for Advanced Communication) in Sophia Antipolis on 7 December at 9 AM.

Martine Clémente, regional manager of the INPI, will also be giving a talk on patentability and French and European procedures.

Nicolas Hautier will then present the criteria which are used to identify whether or not an invention implemented by computer can be patented. He will also describe the differences between the European and American systems as regards software protection. Finally, he will explain the best practices that can increase the possibility of being granted a patent in this highly specific field of inventions implemented by computer.


Admission is free. For further information, please contact Ms Garence, coordinator of the Télécom ParisTech incubator (caroline.garence@telecom-paristech.fr).

Google and Apple are not new to patent wars targeted to acquire former patent pools to invest in IP beyond their core business.

This July, the Californian colossus Google lost a battle actually won by a consortium comprising its concurrent and neighbour of Cupertino, Microsoft, Research in Motion (Blackberry), Ecrisson, Sony and EMC. The battle aimed at acquiring the patent portfolio of Nortel Group, now in bankruptcy. The patents of the portefolio encompasses a wide range of technologies including voice, networking, wireless, optical data transmission and 4G. It seems that the consortium won the auction with a bid at $4,5 Md whereas Google’s bid was significantly lower.


Anyway Google still stands up, pursuing a real interest in the InterDigital patent portfolio. InterDigital has developed 3G with HSDPA and HSUPA breakthroughs, enabling real mobile computing, multimedia, gaming and commerce, and has already be licensed by Apple.


Today, Google is trying to secure as many patents as possible from InterDigital to defend its wireless technology, as well as the Android platform, from lawsuits.


Whatever will be the result of this new IP battle, it’s sure that the whole war has still to be won.

Emanuele Del Pero
Patent Attorney - IT Engineer

General trends one year after Bilski

Expected by professionals specialized in the patentability of computer implemented inventions, the decision of the Supreme Court released in June 2010 puts an end to a quite instable period as to the patentability assessment for inventions of the business method kind.

As a reminder, well accepted by the USPTO since the State Street Bank decision, the patentability of Business Method has seemed very uncertain when a number of decisions have started to adopt a new test called “machine-or-transformation"?.

This test significantly differs from the one established by State Street Bank’s case and dramatically raised the bar regarding the statutory subject matter requirement (35 USC § 101).

In June 2010, the Supreme Court has confirmed that the technical context of the invention will be under scrutiny while assessing patentability. Without considering it is binding, the test called “machine or transformation" was admitted by the Suprem Court as a relevant but non exclusive test for patent eligilibility as to the statutory or non statutory subject matter of inventions. In the decision Bilski, the Suprem Court’s decision also held that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply.

Therefore, since the decision Bilski the sky was therefore somehow less dark for companies holding business method patents, but however not clear enough to know exactly where to go. Indeed, the Bilski decision and the memorandum subsequently issued by the USPTO for its Examiners did not provide precise enough guidelines on which practioners can securely rely.

Patent attorneys and IP practitioners have adapted their drafting trying to draft new claims that meet the requirements of the Suprem Court. Although such adaptation of drafting is quite easy for patent applications not filed yet, such adaptation may turn out to be more tricky when the patent application was filed years ago.


One year after the Bilski decision, almost two hundred decisions were issued by various instances: USPTO’s Board of Appeal (mainly), District Courts, Federal Circuit and Suprem Court.

Robert Greene Sterne and Michelle K. Holoubek have stringently collected a wide number of decisions.

From their study, the following trends are worth noting:

« Trends from the Courts:
(1) The District Courts appear to be very strict when reviewing statutory subject
matter – out of the 6 District Court decisions that addressed § 101, only 2 found that the claims at issue were patent-eligible under § 101.
(2) The Federal Circuit has offered some relief for patent owners. Out of the 3
Federal Circuit decisions that addressed § 101, 2 found that the claims at issue were patent eligible.
(3) The Supreme Court is staying close to the patent-eligibility issue, having granted
cert in the Prometheus case on appeal from the Federal Circuit.

Some trends from the Board worth noting:
(1) The number of decisions where the claims were held by the Board to be non-statutory
under §101 significantly outweighs the number of decisions where the Board found that
the claims satisfied §101. There are about 2.5 non-statutory decisions for every 1 statutory
decision.
(2) It is not unusual for the Board to raise a §101 rejection on its own, even if patent eligibility
was not a subject on appeal, and was not briefed.
(3) The Board still relies heavily on the machine-or-transformation test, although it
does look at other factors as well. For most claims that satisfied the machine-or-transformation test, the Board has found them to be patent-eligible without further analysis.
(4) Although it is not an official test, the "mental steps" doctrine rings true – if the
claims can be performed purely in the human mind, then they will be non-statutory.
(5) Even if the specification is silent as to whether a computer readable medium can
be read on a signal, the Board will likely read a signal into a claim reciting a computer readable medium, rendering it non-statutory.
(6) The panel of judges assigned to a particular appeal matters. As can be seen from
the following, several of the Board judges rarely find a claim patent-eligible, and often raise
previously non-existent §101 rejections.
(7) There are no guarantees. Similar claims have been treated differently by different
panels, and some BPAI judges appear inconsistent in applying the law to seemingly similar
claims. »


Clearly, many points of this study confirm what some Patent Attorneys specialized in business methods have forecasted and have been observing upon the issuance of the decision Bilski in June 2010. However, as revealed by the study, some trends, like the variability of treatments from a judge to another, do not seem to enhance the visibility of companies involved in business methods.

These considerations recall that examining a patent application is in practical more complicated than merely applying laws, guidelines or decisions. From Europe, one could hardly completely blame the US system since differences of treatment are also observed at the European Patent Office. Indeed, in pratical it seems to us than the EPO Examiners are often more reluctant to grant patents for methods related to e-business, banking or travel services than for inventions related to the automotive industry or the telecom even if the features that define the scope of protection are the same.

The European Patent Office has released interesting statics regarding the outcome of grant proceedings.


Below is presented statics for all patents whatever is their technical field.
(Source European Patent Office)
http://www.epo.org/about-us/statistics/granted-patents.html


It should be noticed than since 2008, the grant ration has significantly decreased. For the last three years a patent has been granted in under 50% of all cases. Therefore, more than 50% of the patent applications have been rejected by the Office or withdrawn by the applicants.

Clearly this illustrates the new strategy that the European Patent Office has been put in place for the past few years and that is called "raising the bar" .

It should be also noticed than very important variations exist between technical fields. Indeed, for inventions related to some technical fields like computer implemented invention or business methods, some patentability requirements (inventive step in particular) are significantly more difficult to meet. For instance, the grant ratio for telecom related inventions is five to seven times higher than for computer implemented inventions in connection with banking, e-shopping or travel&tourism inventions.

Qatar deposited its instrument of accession to the PCT to become a contracting state of the Patent Cooperation Treaty (PCT).

Consequently, any international application filed on or after 3 August 2011 will automatically include the designation of Qatar.
With the Qatar, 143 state are no bound by the PCT.

This is a good news for european companies since an increasing number of european applicant see the Qatar as a target market or a place for collaboration. The PCT will provide them a 30 months period from the first filing date (european or french patent application for instance) to file a national patent application in Qatar through the PCT.

Speech by Jean-Pascal Decobert for the Patent-Actions Club on May 5th

The Patent-Actions Club, led by the French Patent & Trademarks Office (INPI) and the Chamber of Commerce & Industry, is a club that aim at discussing topics related to IP issues such as valuation of IP assets.

In this context, Jean-Pascal Decobert is invited on May 5th to share his experience on IP assets valuation and protection through partnership and collaboration agreements.

Jean-Pascal Decobert will provide practical advices to make the best of a technological collaboration while preserving the IP assets and the know-how of the company.

A specific focus will be done for the following aspects: collaboration agreements, non disclosure agreements, negotiation before signing a contract, important contractual clauses etc.

Further information on the terms and conditions for taking part to the next session of the Patent-Actions Club can be obtained from the CCI (mde.sophia@cote-azur.cci.fr +33 4 93 95 45 12 Pauline Weber or José Fiotti).

An abusive practice targeting the owners of trademarks and domain names is on the rise across the internet.

It consists of inciting these owners to register domain names that are identical to their trademarks or other industrial property rights, by allowing them falsely to believe that others are trying to register them. These proposals are most often received from foreign - mainly Asian - companies posing as official domain name registrars.

The following type of message is typical:


We are an organization specified at dealing with domain name dispute and registration in Asia. We have something important on intellectual property right need to confirm with your company.
On , we received an application formally, one applied for the Internet keyword "(usually the trademark name)" and some domain names with our organization.


After checking, we found your company is the original trademark owner. If the company's action haven't been authorized by your company, so their behavior will conflict with your interests.

In order to deal with the matter better, please contact us ASAP.
Best Regards

What can you do if targeted by such a proposal?
• Above all, do not answer the e-mail. If you reply to these companies, they may offer to register the domain names for you at a much higher price than the market price.
• Immediately notify your Board, so that they can ascertain whether the domain name in question is still available and study whether or not to register it.
This type of dishonest incentive proposals is increasingly common on the internet. An interesting solution that can prevent the inconveniences, especially financial, of these practices might include monitoring domain name registrations.

Validity of a three-dimensional trademark comprising the shape of a chocolate product that is reminiscent of a vine shoot

Litigation between the companies TRIANON CHOCOLATIERS BV and REVILLON CHOCOLATIER SAS was recently the subject, in France, of an interesting ruling by the Court of Cassation regarding the validity of a three-dimensional trademark comprising the shape of a product.

The company REVILLON CHOCOLATIER SAS owns French trademark no. 02 3 188 047, filed on 7 October 2002 with class 30, covering the following products: "cocoa, chocolate, chocolate products". This three-dimensional trademark comprises the shape of the product, which is reminiscent of a vine shoot.

The company TRIANON CHOCOLATIERS BV has been summonsed for infringement of this trademark and unfair competition following its release of chocolate twigs with the name Les Rameaux.

The company TRIANON CHOCOLATIERS BV has a grievance against the ruling handed down by the Court of Appeal of Paris on 30 January 2009 for having non-suited its request to have three-dimensional trademark no. 02 3 188 047 declared null and void.

In this instance, the Court of Cassation approved the ruling of the Court of Appeal in that it points out:
- "that no chocolate product may have a thin, short, twisted shape that is even remotely reminiscent of a vine shoot and covered with chocolate over its entire surface";
- "that this representation is different enough from that adopted by all other chocolate products as to let the consumer know the commercial origin of a product and to enable said consumer to repeat the purchasing act carried out in the past without any possibility of confusion".
This same assessment had already been made in Benelux by an order of the Court of Appeal of The Hague on 12 January 2010, which considered the shape reminiscent of a vine shoot to be distinctive since it is considerably different from other chocolate sticks and is the only one which resembles a vine shoot, granting it “distinct originality".

The order of the Court of Cassation is an exception to the severity with which the distinct nature of three-dimensional trademarks is assessed, in particular on the European level.

This ruling provides an opportunity to review the criteria for assessing the distinct nature of trademarks that comprise the shape of the product and recent rulings handed down in this regard.
These criteria are the same as those applicable to other trademark categories, but it is particularly important to bear in mind the perceptions of the target audience, since consumers are not used to ascribing the origins of products according to their shape or packaging, but rather in relation to their name, logo or label. Furthermore, for a three-dimensional trademark to be considered distinctive, it must be as different as possible from representations that are common in the sector in question. The validity of registering a three-dimensional trademark must therefore take these assessment criteria into account. Unless the shape of the actual product is different enough from the shapes commonly used in the industry, it may sometimes be better to consider protecting the label of the packaging or the most distinctive figurative and verbal elements.

Court of Cassation, Ch. Com, 26 October 2010, TRIANON CHOCOLATIERS BV vs. REVILLON CHOCOLATIER and MADEMOISELLE DE MARGAUX SAS.

Under discussion for 10 years, the creation of a European Union patent and the establishment of a European Community patent court has seen recent developments which are being met with optimism, but will also require patience.


The EU Patent: Considerable Progress

The European Council authorised the establishment of a European Union patent on 10 March 2010.
This follows the European Parliament's approval last February for using the enhanced cooperation procedure to adopt the EU patent project.

This enhanced cooperation procedure was called for in view of the objections raised by Italy and Spain regarding the implementation of the EU patent, objections which were based primarily on linguistic considerations. The remaining 25 member states were in favour of establishing an EU patent.
Spain and Italy will be allowed to adopt the EU patent at their own discretion.


Single European Jurisdictional System: Review Required

The European Court of Justice has issued an advisory report against the creation of a system for setting up a European Community patent court, arguing that this system is not compatible with the provisions of the Treaty on European Union and the Treaty on the Functioning of the European Union.

The court noted that the draft agreement grants exclusive jurisdiction over a large number of proceedings (in particular infringement and revocation proceedings), which would deprive the member states of these powers. The following are the main reasons behind this negative report.
• The draft agreement provides a preliminary mechanism, which reserves the right to preliminary ruling for the European Community patent court, while taking this power away from the national courts. And yet, the Court emphasised that the preliminary ruling mechanism promotes direct cooperation among national courts, "allowing them to participate closely in the correct application and uniform interpretation of EU law and in the protection of the rights granted to individuals".
• The Court also noted that under the proposed system, "no orders of the European Community Patent Court that infringe EU law can be subjected to infringement proceedings or incur any pecuniary liability of one or more member States". However, a fundamental mechanism of the Union provides that "States are obliged to repair damage caused to individuals by infringements of EU law that can be attributed to them, whatever the body, including the courts, of the State that has caused the infringement".
Consequently, the advisory report from the European Court of Justice does not challenge the principle of a single patent court, but does require a review of the proposed project.

How can you protect a perfume? A design registration or even a three-dimensional trademark can be filed for the bottle; the name with which the perfume is marketed can be registered as a trademark; but what about the fragrance, the true work of the perfume maker? How can you protect it?

All attempts to file olfactory trademarks with the INPI and the OHIM have been futile.

All that remains is copyright, which implies protecting the fragrance as an intellectual work. Judges do not always agree on this matter: while court of cassation systematically refuses to grant protection by copyright, courts dealing with the substance of the case tend to recognise that a perfume can be considered an intellectual work protected by copyright.
In this instance, the company LANCOME brought a lawsuit against the company ARGEVILLE for copyright infringement, asserting a fragrance marketed by the latter company imitates the characteristics of its fragrance marketed under the trademark TRESOR.

In an order on 13 September 2007, the Court of Appeal of Aix en Provence admitted the infringement lawsuit.

On 22 January 2009, the Court of Cassation overruled this order, considering that “the fragrance of a perfume, which is the result of the simple implementation of know-how, does not constitute the creation of a form of expression that can benefit from copyright protection as an intellectual work��?.

Then, the Court of Appeal of Aix en Provence, by its order of 10 December 2010, on referral after cassation, admitted that a fragrance can be protected by copyright:
• Article L112-1 of the French Intellectual Property Code (CPI) states that “copyright protection can be granted to all intellectual works, regardless of genre, form of expression, merit or intended audience��?.
• Article L112-2 of the CPI, which lists the types of work that can be considered creations, contains the adverb “mainly��?, which implies that the list is not exhaustive.
• Even if the creation of a perfume requires know-how, it is not a purely technical operation.
• The creation of a perfume also requires “research into the succession and interactions of odours, a combination of volatile and persistent elements and a blending of various essences in proportions that will release a characteristic olfactory form, reproducing the personality, sensitivity and imagination of its author and constituting, as long as it is original, an artistic creation��?.

In this instance, it was ultimately found that TRESOR by LANCOME “does not have entirely new characteristics that can be fully identified by an average consumer and which would show the creative contribution of the author��? and the lawsuit for copyright infringement was therefore dismissed. However, it is no less true that this order represents major progress towards the basic recognition of copyright protection of the fragrance of a perfume, even when its implementation is sensitive in terms of compliance with conditions of originality.

Furthermore, the implementation of systematic testing processes in the company is established as a way to provide proof of creation prior to the disputed fragrance.
Ruling of the Court of Appeal of Aix en Provence on 10 December 2010 on referral after cassation - No. 2010/475

Another step forward in the fight against illegal downloads:
Hadopi takes on repeat offenders!

Hadopi, the High Authority on Content Distribution and Copyright Protection on the Internet, is an independent agency whose mandate is defined in the Creation and Internet Act of 12 June 2009, consisting mainly of:

- promoting increased availability of legal content on the internet;

- observing the licit or illicit use of content on the internet;

- protecting online content against applicable copyright infringements.


As part of this protection mandate, Hadopi has set up a two-step progressive warning mechanism.

The first phase was educational, aimed at informing internet users of their obligation to monitor their own internet access, and has just ended after three months of actual operation, with mixed results.

During this period, according to the scarce figures published by journalists, anywhere between 20,000 and 100,000 infringements were recorded each day, with 800 to 2,000 daily warnings sent out to internet users accused of downloading illegal files. Following these notifications, 50% of internet users continued to breach copyright laws.

These figures are obviously very difficult to verify and must be subjected to careful analysis.

Regardless, Hadopi is currently initiating the penal step of its process, in which any person suspected of repeated acts of piracy will receive an e-mail, also sent by registered mail with acknowledgement of receipt. Internet access may be cut off after the third offense.

Repeat offenders will have to behave themselves!

“Swiss Claims" are a specific wording of claim which was recommended by the Enlarged Board of Appeals of the EPO (G6/83) when applying for protection of a second or any subsequent therapeutic use of a substance or composition that is already known as a drug.

Example of a Swiss claim: “Use of a substance or a composition X in the preparation of a drug for treating the disease".

With the passing of the new European Patent Convention (EPC 2000) on 13 December 2007, this wording no longer seems necessary for protecting this type of invention. The following wording would seem to be preferable:

EPC 2000 claim: “Substance X or composition X to be used for treating the disease".

This has been confirmed by the Enlarged Board of Appeals, which clearly stated in February 2010 in its decision G2/08 that Swiss Claims are no longer justified under the new wording of EPC 2000 (EPC art. 54).

The Enlarged Board of Appeal has established a period of three months from the publication of its decision G2/08 in which to adapt patent applications that still contain Swiss Claims. This announcement was published on 28 October 2010 in the Official Journal of the EPO.

Consequently, no new international or European patent application with a filing or priority date later than 29 January 2011 may contain any Swiss Claims.

For international or European patent applications pending on 29 January 2011, it is still advisable to adapt the claims to the new wording implemented by EPC 2000.

An analysis of patent litigations is often valuable for understanding the state of competition within an industrial sector. The year 2010 saw particularly vicious infringement lawsuits, in line with the competition that can be seen plainly on the shelves of mobile telephone shops.
The background for this state of affairs involves vast numbers of patents.

Traditional players in the mobile telephone market were quick to realise the utility of patent protection; Nokia, RIM or Sony Ericsson, to mention a few, have large portfolios of industrial property assets.

The increasing overlap between mobile technology and software applications, in particular in smartphones, has done nothing but speed up this trend. Leading players in the IT industry soon joined the fray, with historically well-stocked patent portfolios. Apple is a classic example of this convergence, which it has turned into success with its iPhone.

To our knowledge, more than 20 patent infringement lawsuits, in most cases American, are under way as of 31 December 2010 among leading names in the sector, including Apple, Microsoft, Nokia, RIM, Oracle, Samsung, Motorola, and Kodak in telephone imagery. Every dispute generally involves several patents.

The explosion in the rate of litigation can be explained mainly by the fact that companies that arrived late on the market need to impede the success of rapidly growing companies. Apple has become a popular target, revealing the strategy of its competitors to harm the company as much as possible, in particular due to its enviable growth and margins. Nokia, which has been losing market share, is one of its attackers.

The convergence of mobile telephony, IT and peripheral technology (in particular touch screens) is also used as justification for a number of disputes: Apple’s touch screens are a problem for Elan; Android (Google’s operating system) is being contested by Oracle for its Java technology and by Gemalto, etc…The risk of clashes between technologies is more frequent now than ever before.
Finally, certain companies may seek to disrupt the contractual and commercial relationships of competitors who use the Android system. It is not strange for infringement lawsuits to lead to dissension in the defender’s camp (responsibility sharing, licence agreement interpretations, validity of warranty clauses, etc.).

In many cases, a retort (a counter-lawsuit for infringement of other patents) rapidly follows the first legal proceeding. One thing is for sure: currently the best way to ensure survival in the mobile telephone industry is to be well-armed in terms of intellectual property.

The IEEPI (European Enterprise and Intellectual Property Institute) offers training programmes aimed at promoting control of industrial property within companies, in particular SMEs.

In this context, Jean-Pascal Decobert will be speaking on 17 February 2011 at Sophia Antipolis during a session dealing with the topic of: “Protecting and selling non-patentable innovations and know-how��?.

Further information on the terms and conditions for taking part in the training course can be obtained from the IEEPI (www.ieepi.org / +33 (0)4.90.24.84.07).

Ruling no. 2010-45 QPC of 6 October 2010


On 9 July 2010, the Council of State brought before the Constitutional Council a priority question regarding the constitutionality of article L.45 of the Post and Electronic Communications Code. This article outlines the assignment of internet domain names by specialist companies. The Constitutional Council was asked for its opinion regarding the conformity of this article with the rights and liberties laid down by the Constitution.

The Constitutional Council points out that this article grants bodies appointed by the Minister in charge of electronic communications the right to assign and manage domain names “within top level domains of the internet’s domain name system, corresponding to France�; that its core purpose is to ensure that the assignment of domain names by these bodies is carried out “in the public interest, according to publically available, non-discriminatory rules which aim to ensure that applicants respect intellectual property rights�; that, moreover, this article grants a Decree by the Council of State the responsibility for specifying the rules that govern its application; that, while legislators have thus protected intellectual property rights, they have delegated all power to define the conditions according to which domain names are assigned or can be renewed, rejected or withdrawn; that no other legal provision institutes guarantees that ensure respect for freedom of enterprise as well as for Article 11 of the 1789 Declaration; and that, subsequently, legislators have misinterpreted the scope of their powers.

In these conditions, the members of the Constitutional Council therefore estimate that “Article L. 45 of the Post and Electronic Communications Code shall be declared unconstitutional�.

This declaration of unconstitutionality will come into force on 1 July 2011.

Parliament therefore has a term of nine months in which to legislate on the issue of assigning domain names. Considerable changes may ensue, affecting both domain name registrars and their clients who are used to booking their domain names.

The case will be followed up in the summer.

Jean-Pascal DECOBERT will intervene on November 19th, 2010 at the winter university of EBAN on the theme “protection of computer implemented inventions, comparison between the American and the European approaches. EBAN (European Business Angels Network) is an association of business angels and constitutes an international network of investment professionals bringing their financial support to start-ups.

As our activity increases and to satisfy our client needs, Marie-Clotilde SCHIES joined our Trademark, domain name and contract department.

Marie-Clotilde SCHIES has a Master of Law and a Post Graduate Specialisation in Industrial Property Master.

Marie-Clotilde SCHIES specializes in the acquisition of Trademarks, Designs and Domain Names in France, Monaco and worldwide.

She also handles opposition to defend her clients’ IP rights and protect them against competitors.

Additionally, Marie-Clotilde SCHIES advises and assists her clients for litigation and contract drafting.

She provides counsels for multinational firms in various fields such as the food-processing industry, pharmaceutical industry, cosmetics, fashion, banking, real estate etc. She also deals with SMES, public institutions and individuals.

Cabinet Hautier's team now counts an additional European Patent Attorney.

The European Qualification Examination can only be obtained with a high level of expertise in european patent law. This examination enables to represent companies and inventors for any actions before the European Patent Office (EPO) (filing patents, obtaining grant through examination proceedings, leading oppositions and appeals etc.)

Each year, only a quarter of the 1500 candidates of all nationalities taking this exam are qualified.

The achievement of Allison DELAPORTE, as a first sitter, is of course mainly due to her professional skills but also relies on the efforts that Cabinet HAUTIER constantly carries out to bring its counsels to the highest level of expertise.



Allison DELAPORTE, engineer specialized in Biological Engineering - Pharmacology – Biotechnology will be pleased to represent and counsel before the EPO clients of Cabinet HAUTIER in the fields of chemistry, life sciences and medical systems and devices.

Nicolas Hautier has been invited to discuss computer program patentability at the PACA EST Incubator on July 13th. He will share his expertise and experience with heads of technical departments invited by the Incubator.

In the course of his presentation, Nicolas Hautier will provide updates of European and American case law on computer program protection.

Computer program protection is a hot topic, many projects supported by the PACA EST incubator deal with developing software, and the meeting is promised to be very interactive.

Expected by professionals specialized in the patentability of computer implemented inventions, the decision of the Supreme Court puts an end to a quite instable period as to the patentability assessment for inventions of the business method kind. Well accepted by the USPTO since the State Street Bank decision, the sky looked darker for business methods in the recent past when some decisions started to adopt a patentability test differing from the one established by State Street Bank’s case. The Supreme Court now confirms that the technical context of the invention will be under scrutiny while assessing patentability. Without considering it is binding, the test called “machine or transformation"? is admitted as a basis for evaluations as to the statutory or non statutory subject matter of inventions. The USPTO immediately communicated a memorandum to the examiners. This memo is available at

http://www.uspto.gov/patents/law/exam/bilski_guidance_28jun2010.pdf

We announced in previous news of this web site that a very important decision would be released by the US Supreme Court regarding patent related to business method. Bilski decision was supposed to come out on July 1st…, but we are still waiting!

As a reminder, this decision directly concerns the patentability condition of Article 35 U.S.C. 101 that relates to the statutory subject matter.

For now, what we have to do is to rely on previous rulings of Bilski, USPTO examination guidelines and current cases we went through…, and to firmly hope that the Supreme Court decision will bring a clear interpretation of the statutory subject matter and of the “machine-or-transformation"? test.

COMPUTER IMPLEMENTED INVENTIONS: COMPARISON OF EPO’S AND INPI’S APPROACHES


Laws are quite identical in the EPC (European Patent Convention) and in the CPI (French Code de la Propriété Intellectuelle) regarding the definition of a patentable inventions.

Is this howevere sufficiant to have similar rulings regarding “computer implemented inventions" at the:
- EPO
- French Patent Office (INPI)
- French Court (Tribunal de Grande Instance) ?

Nicolas Hautier is invited at the IPICA meeting organized by the INPI in SKEMA EXECUTIVE to present that issue.

Nicolas will present a recent decision of the TGI de Paris that clearly shows that EPO, INPI and TGI rulings may highly differ.

A review of French and EPO main case laws regarding “computer implemented inventions" will be presented to understand that recent decision.

Good practices to optimize chances to obtain the grant of patents for computer implemented inventions will also be discussed.

Computer implemented inventions:
The Enlarged Board of Appeal of the EPO decides the referral G03/08 is inadmissible.
The President of the European Patent Office had asked to the Supreme Board of the EPO its opinion about questions related to patentability of inventions in the field of computer science.

The Enlarged Board of Appeal decides this referral is not admissible since these questions are not subject to substantial divergences between past law cases of Boards of Appeal.

The Enlarged Board often relies upon the notorious decision T 1173/97 IBM to recall the basis for assessing patentability of computer inventions. The Board also confirms that this assessment logic often moves the “invention��? requirement (article 52 (1), (2) EPO) towards the inventive step requirement (article 56 EPO). The latter criterion becomes the main bar for patentability of such kind of inventions in Europe.

The American company had obtained the grant of a controversial patent (US 5 960 411) about an e-commerce technique based on user orders placed in one single click.

In March, after a long procedure, this patent was partially confirmed.

In Europe, the case law is much less in favor of patentability of this kind of inventions often called “business method��?. And Amazon never gets its patent granted by the European Patent Office in connection with this invention.

Nokia's just hit Apple with a patent infringement lawsuit, claiming that all iPhones models infringe on ten of Nokia's patents relating to GSM, UMTS, and WiFi. According to Nokia's press release, the patents in question have been licensed by 40 other companies, "including virtually all the leading mobile device vendors," and Apple has refused to agree to "appropriate" license terms and is thereby free-riding on Nokia’s 40 Billion dollar worth of researched technology.

“We believe that Nokia is not seeking an injunction; rather, we believe that the company has been in talks with Apple concerning a patent royalty payment for over a year" said Analyst Gene Munster in a note to investors. "With today's announcement, it appears that the companies have not come to a resolution and Nokia is attempting to hasten the process by further choosing the competent court of Delaware, which has the reputation of quickly settling legal patent disputes.

Nokia is the owner of a great patent portfolio of roughly 10.000 patent families. The ten carefully selected patents used against Apple are deemed essential, meaning that a modern handset can’t be made without relying on the technology they teach. The risk may seem huge for Nokia since an unfavorable outcome can jeopardize the licenses already in place with other companies regarding these same patents. However, we can rest assured that the litigation team of Nokia already has analyzed and tested the strength of their patents.

How to optimise your intangible assets?

Nicolas HAUTIER will share his experience in this area at the next Patent Action Club at the Ceram in Sophia Antipolis.

Our experts will be present at the next Sophia Antipolis Ceram Executive.

They will share their experience with visitors and answer queries concerning means to enhance economic security using IP Rights.

The patent rights in the computer domain are far from being stabilized. We have already noticed it by the differences of assessment of the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). The jurisprudences of the Boards of Appeal of the European Office have themselves strongly evolved since 1978.

These evolutions must have led to some incoherencies in the assessment of the inventions implemented by computer whether it is about methods constituted by a series of steps or computer programs products. In order to overcome some incoherencies, the President of the European Patent Office has just submitted a question to the Enlarged Board of Appeal under the number G3/08. Indeed, an important decision had until then admitted the patentability of the computer programs products on condition that their execution implies an additional technical effect whereas a technical effect even known is sufficient so far to overcome the obstacle of the technical character for the claims written as a method or a device.

The Enlarged Board of Appeal of the European Patent Office should take a stand in the months to come and clarify the situation. This does not make the task of the Patent Attorney easier in the stage of writing of patent applications in the most adapted form for obtaining European patents.

On the American level, observers have for a long time criticized the USPTO its relative clemency as regards the interpretation of the requirement of inventive step (non obviousness) as well as the acceptance of the patentability of inventions without technical consideration.

Maybe this external pressure has led the American Office to considerably change its position and we have recently noticed an important fall of the granting rates of American patents. The court orders have something to do with it. Particularly, the decision KSR International Company v Telefex Inc has considerably strengthened the requirement regarding the inventive step. More recently, the decision In Re Bilski has updated the assessment requirements of patentability of the Business methods in the United States. This decision of October 30, 2008 adopts a test called « Machine – or Transformation » to determine if an innovation falls within the scope of protectable inventions according to the section 101 of the Patent Act.

Even if this decision has not, in principle, a fundamental impact for a great majority of inventions, the tendency is therefore to tighten the patentability requirements before the American Office.

The assessment of the Patent Attorney, the quality of writing and the follow-up of the patent applications turn out to be all the more crucial currently.

The WIPO has published its annual report: the number of filed PCT patent applications has increased by roughly 4% by year between 1995 and 2008. Approximately 166 400 PCT applications were filed in 2008.

The five biggest offices (Chinese, Japanese, American, Korean and European) count for more than three quarters of the application filings.

The appeal procedure T0959/03 has just confirmed the direction of the European Patent Office (EPO) about the patentability of the business methods and this for an invention in the limelight of the American judicial current affairs.

Two inventors, Ed Pool and Doug Mauer (linked to the company DE Technologies Inc) filed just about anywhere in the world, and at the EPO, patent applications about a universal buying office center for international transactions. The title of this patent application admits without ambiguity the very “business" side of this invention.

In the United States, two patents have already been granted around this invention, patents that DE Technologies skilfully exploits to harass American major companies among which the company Dell Computers.

In Europe, things seem to have got off to a bad start for the applicants. The Technical Board of Appeal has just confirmed the rejection decision of the examining division of the EPO.

If the decision is not surprising in the eyes of the current jurisprudence, the grounds adopted are clear and rectify the reasoning that the examining division had followed. Firstly, the conditions of the article 52 (2) and (3) EPO are fulfilled as long as technical means are present (even if they are ordinary…). Then, it is on the criterion of the inventive step that the assessment of the patentability must be made if the invention combining technical and non technical means is new. On this point, it is the concept of technical contribution which is here reaffirmed and the non technical means cannot be taken into account to justify the implication of an inventive step.

In the individual case, the technical means seemed to be ordinary and the contribution of the invention was of a commercial nature. The inventive step has therefore not been admitted.

Even if some decisions have tempered the American enthusiasm for the “business methods" (see for example the affair Bowman), the case Ed Pool underlines the strong differences of assessment of the patentability in the world.

Recent statistics show an important growth of the number of the domain names ending with «.fr». Thus, they are currently 1.3 million with a growth rate of 36 % on 1 year whereas the growth recorded for the whole of the domain names is around 20 %.

This growth can be explained by the relaxing of the granting rules of the domain names «.fr» as well as by the image of reliability that this extension represents.

These recent statistics confirm therefore the importance of the reservation of the domain names in «.fr» for the owners of the trademarks in addition to the protection.

Benoît BATTISTELLI, the current General Manager of the INPI, has just been nominated President of the Board of Directors of the European Patent Office.

His mandate of President of the Board of Directors will start on March 5, 2009 for three years. This should not affect his current duties of General Manager of the INPI.

With this appointment we can hope that France will play an important role in the expected evolutions regarding patents: European Patent Litigation Agreement regarding patents, setting up of a Community patent etc.

The atmosphere is now quieter, but we remember the sharp debate that occurred a few months ago because of a certain European directive about the patentability of the software innovations. The most virulent opponents to the patentability maintained that the freedom of the software innovations is essential to the pluralistic development in this branch of industry, particularly to merge the interests of the big groups and preserve the small structures, even the individuals.

The development of patent groups seems to counter this argument. These groups are alliances entered between players of a given market, owners of patents. We understand that this kind of agreements allows exchanges of licences between the partners but we observe more and more open alliances, i.e. allowing to third companies to obtain licences of the groups’ patents.

It is the case of an alliance concluded very recently between Alcatel-Lucent, Cisco, Clearwire, Intel, Samsung and Sprint on the WiMAX, technology of communication at high bandwidth.

This contractual solution could offer a compromise between patentees and other players of the market in a system where nobody loses. Furthermore the consumer does not seem to feel cheated, for these alliances generally improve the interoperability and the compatibility of the products stemmed from the various manufacturers.

After a favourable vote of the French National Council of Bars, the French National Company of Trademark and Patent Attorneys has just come down in favour of a fusion of the two professions.

Moreover, the speech of Mrs Rachida DATI at Lille this 17 October seems to definitely show the intention of the government to follow this way.

The patent and trademark attorneys would become attorneys at law with the “Intellectual property attorneys? specialization which would preserve the visibility of the expertise of our profession in the field of intellectual property right.

The “Professional Representative before the European Patent Office? and “Professional Representative before the OHIM (for the Community trademarks and designs)? qualifications, will complete, for the professionals who have this qualification, the recognition of their competences.

A recent study of the company EVALUESERVE entitled « Patenting Landscape in China » (May 22nd, 2008) confirms the quick spread of patent applications on the Chinese ground. The Chinese office has thus received in 2007, 694 153 patent applications (including utility models and ornamental models).

The number of applications is increasing so much (+ 21,1%) that China could surpass the United States and Japan by a few years.

The significance of a monopoly on the Chinese territory has been confirmed for all the potential patent applicants. It’s all the more true since the domestic filings (made by Chinese companies) are in the majority. Without a reaction of foreign companies, we could fear a quick takeover of the Chinese competitors in the most innovative sector.

With an accessible procedure cost, the Chinese patent has to be more and more considered in a protection strategy. We must not forget India where a growth of the applications is similar.

The new European Patent Convention (EPC 2000) is the result of the diplomatic conference of the 9th November 2000 between the contracting states of the Convention.
In accordance with article 8 of this Act of revision of the EPC of the 29th November 2000, the new EPC will come into force at the latest on the 13th December 2007, that is to say two years after the ratification to the Act of the fifteenth contracting state.

The main objectives of the revision of the European Patent Convention are:

· The harmonization of the EPC dated 1973 with the new developments of the international law: Agreement TRIPS (1994) and Treaty on the Patents (2000).
· To make the later changes of the EPC easier by removing or by changing some provisions of the Convention towards the implementing regulations which is simply modifiable by the Board of Directors.
· The taking into account of the needs of the users: new procedures have been planned.
· The taking into account of the needs of the European Patent Office: due to the increase of the workload, the EPO demanded the setting up at the office level of the system BEST (Bringing Examination and Search Together).

No change has been brought to the patents right; the procedures of obtaining, opposition and appeal have not been changed.

The important changes to remember are described hereafter:

· The change of the article 52(4) into the article 53(c) enables not to consider anymore the methods of chirurgical or therapeutic treatment of the human or animal body and the diagnosis methods applied to the human or animal body as non likely to industrial application, but only like exceptions to the patentability.

· The removal of the article 54(4) EPC and the rule 23bis EPC change the state of the art taken into account for the novelty step.
At present, regarding the assessment of the inventive step, a prior European patent application published on or after the filing date of the application under examination is comprised in the state of the art only for the contracting states for which the designation fees have been paid. With the EPC 2000, these kinds of European patent applications will be opposable whatever which designation fees have been paid.

· The new article 54(5) EPC 2000 authorizes the protection of the second (or nth) therapeutic application.

· The article 87(1) EPC recognizes the right of priority for all the member countries of the WTO and no longer only for the signatory countries of the Convention of Paris.

· The change of the article 69 determining the scope of protection, which states in the EPC 2000 that “the extent of the protection shall be determined by the claims� and no longer “by the terms of the claims�. The protocol of interpretation of A.69 EPC 2000 specifies that: “due account shall be taken of any element which is equivalent to an element specified in the claims�. These changes contribute to harmonize the interpretation of the European patents by the national jurisdiction during infringement actions.

· The criteria to obtain a filing date are simplified by the new article 80 EPC 2000 and the rule 40 of the implementing regulations.
The applicant must only supply:
- A request of delivery of the European patent
- Informations about the applicant
- A description

* The claims are no longer necessary to obtain a filing date!!
However, the article 123(2) remains unchanged and limits therefore these new criteria.

This new article and the corresponding rule go much further by precising that the description and the drawings can be replaced with a reference to a previous filed application by precising:
- The filing date
- The filing number
- The Office with which it was filed.

* The applicant can even specify that the reference also replaces the claims.
The implementing regulations provide a two-month delay following the filing to supply an official copy of the reference and a translation in one of the three official languages if the reference application was not written in one of these languages.

· According to the new article 14 EPC 2000, the European patent applications will be allowed to be filed in any language, on condition that a translation is filed according to the implementing regulations.

· A new centralised procedure of limitation or revocation of a European patent, a patent amended following an opposition or limitation proceedings, is provided for by the new article 105 EPC, on condition that no opposition proceedings are in progress.

· The other new procedure set up according to the article 112 EPC 2000 allows the parties to file a petition for review of a decision of the Board of Appeal by the Enlarged Board of Appeal. However, this type of request can only be filed in the case of a fundamental procedural error or a breach that could have had an effect on the decision.

· The article 121 EPC 2000 is changed to allow the implementation of the request for further proceedings in case of non-respect of some time limits prescribed by the EPC in the proceedings for grant. The article 122 EPC 2000 is changed according to the new article 121 EPC.

· The article 134 EPC and the rule 153 EPC 2000 provide for provisions relating to the confidentiality obligation of the professional representatives and their right to refuse the disclosure before the EPO their communication with their client or any other person. These changes ensued from an American court decision during a litigation between Myers Squibb and Rhone Poulenc Rorer where the judge ordered the presentation of all the elements of the European patent applications file. No text existed then to support the European representative to refuse.

· The article 124 EPC 2000 is becoming more restrictive. The European Patent Office can oblige the applicant to inform them about the state of the art taken in consideration in the national or regional patent proceedings about an invention covered by the European patent application.

This reviewed text will apply to the patent applications filed after its coming into force, except if it is done differently.

For example:

· The article 54(5) EPC 2000 will be applicable to pending applications during the coming into force of the new text.

· The article 112(a) EPC 2000 will be applicable to the orders of the Board of Appeal rendered from the coming into force of the EPC 2000.

· The articles 121 and 122 EPC 2000 will be applicable to the pending applications.

See the new text of the EPC 2000 and its implementing regulations.

The London Agreement, adopted in October 2000 by the main contracting states of the EPC, has been approved by the French Parliament seven years later.

The ratification by France was one of the conditions for the implementation of the London Agreement.

This agreement is one of the means set up by the contracting states to reduce the translation fees. For the granting of a European patent, the claims must be translated in the two other official languages of the EPO. Moreover, in order for a European patent to come into effect in the contracting states, the owner must supply to each state a translation of the patent in the national language.

With the London Agreement, some contracting states of the EPC have given up, totally or partially, their translation requirement (the translation requirement of the claims in the three official languages of the EPO is maintained):

- the states which have a national language in common with one of the three official languages of the EPO have decided to remove the requirements regarding translation,

- the states which national language is not one of the three official languages of the EPO have the right to require a translation of the claims in the language of their choice and a translation of the specification in the official language of their choice (particularly English).

These contracting states, 13 in number, are to date:
Germany
France No
England requirement
Switzerland of translation
Liechtenstein
Luxemburg
Monaco

Croatia*
Iceland* Requirement of
Latvia* translation of
Netherlands* the claims
Slovenia*
Denmark*

* Countries requiring as well the English translation of the specification

The implementation of the London Agreement is planned for May 1st, 2008.

London agreement: link

The Supreme Court of the United States has, on the last 30th April, given a judgement of importance (KSR international v. Teleflex inc.) about the decision of the patentability.

The criteria of patentability stemmed from the American code are the novelty, the utility and the non obviousness. This last criterion is in the heart of the recent decision.

Historically, the notion of non obviousness has been quickly introduced in the American right to only grant a monopoly to the inventions proving a sufficient progress in comparison with the existing techniques. The non obviousness is the counterpart of the inventive step known in Europe.

This criterion, formalized by the article 35USC 103 of the code, implies that a patent cannot be obtained when the differences between the subject of the invention and the state of the art are such that this subject would have been obvious for an average technician of the considered domain (person skilled in the art).

Distinguishing the obvious inventions from the non obvious ones has been always… not obvious for the patent practitioner. It is particularly the case when the invention is an association of technical teachings known separately from a few documents of the prior art.

The American jurisprudence, followed by the Patent Office (USPTO), has developed an analytic method initiated with the judgement Graham v. J Deere in 1966 and has then created a test often named TSM to assess the obviousness or the non obviousness of the combination of the prior art. According to this practical, the invention is obvious only if the prior art teaches (Teach), suggests (Suggest) or motivates (Motivate) the combination of the teachings of the prior art.

The application of this test is simple but it proved to be not very selective as time goes by. It implies moreover a rather passive vision of the person skilled in the art.

This is how the Court of Appeal of the federal circuit had validated the patent US 6,237,565 exploited by Teleflex in spite of two prior patents which, associated, formed directly the subject of the claimed invention, with the ground that the combination of the teachings of this prior art was neither taught, nor suggested, nor motivated by the prior art.

The Supreme Court wants now to intensify the demand of the non obviousness.

If it confirms the validity of the application of the test TSM, it criticizes the current use of it which is too rigid and systematic.

The person skilled in the art comes out of it as a stronger person for this juridical concept comes back in the heart of the assessment of the non obviousness.

From a more political point of view, it is the opportunity for the American authorities to limit a bit the grants of patents after an explosion of the number of filings (from 99 000 in 1990 to 440 000 in 2006) to which the clemency of the USPTO had contributed.

To our mind the credibility of the American patent system is improved.

The affair Senseo is without a doubt one of the most significant ones of the judicial current affairs of patent rights. There has been a new development.

In September 1997, the multinational company Sara Lee filed a patent application then extended just about anywhere in the world with the obvious purpose to obtain a monopoly on the system of coffee machine well known under the mark Senseo and on the pod Senseo itself. This ambition is a challenge for at that time some very close packaging techniques of ground coffee packagings and machines adapted to these disposable packaging were already known.

Cleverly, the patent attorney of Sara Lee defends the patentability of a choice of shape and dimensions for the pod and for the receptacle of the machine that cooperates with it. This combination, the applicant of the patent says, ensures a better flow of the hot water. On the 11th July 2001 the European patent is delivered and claims the bag, the receptacle and their combination.

At the same time, on the commercial ground, Senseo met with a wide success and the competitors, tempted by the huge quantities of consumables at stake, didn’t take long to propose pods compatible with the system Senseo. Sara Lee has immediately reacted by bringing infringement proceedings by several national jurisdictions. This company obtained this way from the Court of Anvers a ban under penalty of the continuation of competitor schemes despite several oppositions pending by the European Patent Office (EPO) to contest the validity of the granted patent.

The European patent is maintained by the opposition division under a sufficiently wide form to continue to bother the competitors: by supplying bags compatible with the patented combination bag/receptacle, these coffee merchants make acts of infringement by supplying means contributing to the claimed subject matter.

It is after an appeal of the opponents that a Board of Appeal of the European Patent Office has just recently given a verdict… in favour of a pure and simple revocation of the patent!

These episodes underline the imperfections of the patent system in Europe and once again the collision between the proceedings by the EPO and the ones of the national jurisdictions generating slowness and/or lack of reliability of the acts of infringements.

We also have to wonder about the limits of the principle of infringement by contribution. In the case in point, the claimed bag seemed to be of an ordinary design but the patentee had cleverly related it to more defensible features about the machine. By claiming this association, Sara Lee had finally obtained what they wished: a monopoly, even indirect, on the Senseo bag. This is all the more disturbing since the reality of a technical cooperation between the bag and the receptacle of the machine is doubtful but the assertions of the applicant were enough to grant the European patent.

Sara Lee will thus be able to find consolation as their European patent, even questionable and now revoked, has disturbed their competitors during more than nine years. Although it is unsatisfactory on the juridical plane, it is far from being negligible commercially.