Do I need to have you sign a confidentiality agreement?
We understand that you are very concerned with maintaining the secrecy of your invention, but there is no need to have us sign a confidentiality agreement before describing it to us. The profession of Industrial Property Attorney is very restricted by the law and a code of professional ethics. Your Industrial Property Attorney is bound by professional secrecy and you can describe your invention to him or her with complete confidence.
Doubtless you are familiar with other professions bound by professional secrecy and to which you grant complete confidence: attorney, doctor...
What are the main timeframes in the patent process?
Three examples are provided below:
a French filing: the filing date marks the beginning of the one-year priority period. During this 12-month period, filings can be done abroad while benefiting from the precedence of the French filing date;
a PCT filing: the international phase extends at most until the expiration of a period of 30 months from the priority date or from the international filing date outside priority; a PCT filing has the advantage of deferring the investment corresponding to extensions in various foreign countries;
a "EUROPCT" filing: this is a European filing following a PCT application; the existence of a prior international phase can contribute to speeding up the examination of the European patent, which is generally issued within 2 to 4 years from its filing date. The European patent must then be validated in the EPO member states in which one wishes to obtain a national patent, which is a simple procedural step.
French timeframes [pdf]
PCT timeframes [pdf]
EUROPCT timeframes [pdf]
How do I decide which countries to file a patent application in for my invention?
The validity of a patent is limited to the territory of the country where it was issued. Given the globalization of business and industry, a French patent generally does not offer enough protection and it is necessary to extend its protection to other countries.Where are the markets for the patented products? What countries are competitors in?
What procedures must be followed? Which costs will be at stake? Is it possible to delay expenditures?
The choice of countries for extension of a patent application is a strategic decision for a business, which must take cost into account. Several factors must be considered:
The Cabinet Moutard has a network of Correspondents in every country in the world for your filings abroad and will advise you, according to your needs, on the steps to take.
The links below give you the list of countries accessible through the European filing procedure and the international application filing procedure.
List of EPO member countries (on the EPO website)
List of PCT member countries (on the WIPO website)
When will I be able to start exploiting my invention?
Filing a patent application gives you protection beginning on the day of the filing. As far as its disclosure and exploitation are concerned, you must wait for approval from the ministry of defence, who can oppose your application if your invention affects national defence interests. Except in case of exception, this approval is generally granted in the month following the filing. In case of emergency, the Cabinet Moutard can help you with the process. Of course, you should make sure the invention is free for exploitation.
Patentability and freedom to operate: what is the difference?
A patentable invention must meet the conditions for patentability, namely novelty, inventive step and industrial application; it also must not fall under any of the exclusions stipulated by the law.
you reproduce it, even by improving it,
you reproduce it by equivalence, i.e. by different means but which perform the same function to achieve an identical result.
Analysis of freedom to operate has a different purpose: its goal is to determine whether your innovation, whether or not the subject of a patent application, is capable, if exploited, of infringing an exclusive right, for example a monopoly granted by a patent, and therefore of being the subject of a lawsuit such as an infringement suit. You may be infringing on a patented invention if:
Given the significant risk incurred, this analysis must be particularly rigorous and requires considerable objectivity. It is done in three steps:
search, in the anticipated countries of exploitation, for relevant patents in force,
analysis of the scope of the claims of the identified patents to determine whether the innovation reproduces one or several claims,
possibly, patentability study for claims which may be opposed; this study may also include a search for priorities.
This is a wise precaution to take when you are considering making major investments to exploit a new product.
Secrecy or patent?
Secrecy and patents are two ways to protect an invention, but in radically different ways.
||Solidity of protection
||The cost of a secrecy in a business is not null, because it must be organized.
On a case-by-case basis.
|Can be indefinite if the secret is well-kept.
||Marketing may unveil the secret.
Especially applicable to manufacturing methods, which remain internal to the business.
|If the secret is disclosed, the protection disappears without any recourse. Secrecy does not provide an exclusive right.
||The cost of a patent is easy to assess.
||20 years maximum.
||All types of inventions as long as the criteria for patentability are met.
||Lawsuit (infringement suit).
Soleau envelope or patent?
The Soleau envelope is one way to date an invention without disclosing it. It makes it possible to settle disputes concerning the capacity of inventor, in particular, and it can grant a right of prior personal possession: if a third party files a patent application for the same invention at a later date, it will be possible for the holder of the Soleau envelope to establish that he had "prior personal possession" of it. In practice, this only allows the holder of the Soleau envelope to exploit this invention himself if he has not filed a corresponding patent, without being able to transfer or license it, or, of course, bring infringement proceedings.
For example, in the field of chemistry, the Soleau envelope makes it possible to preserve the "prior personal possession" of intermediate products during research.
A well-kept laboratory notebook, a notarized statement or just a registered letter sent to yourself (and which remains sealed) serves the same purpose.
How do I protect the software I've just developed?
Software can benefit from double protection: by copyright and by patent. These protections operate differently.
||Scope of the protection
||Only for the form of the software, meaning its source code.
||Difficult to implement.
||Steps to take to obtain a definite date.
||The cost of a patent is easy to assess.
||Obtain the patent.
Protection by copyright is well suited to illegal copies (downloading, file copying...) because the form is entirely reproduced and the infringement is easy to prove. It does not apply, or is very difficult to apply, if the software is rewritten. Patents provide a higher level of protection because they apply to the functionalities, i.e. also if the software has been rewritten. However, it can be very difficult to prove infringement.
What is a copyright?
« Copyright » is a protection offered under American law.
To obtain better protection of their rights in the United States, authors must register their work. This copyright filing then allows authors to affix the note © on their work, following by the filing year, then the name of the filer.
According to the 1952 Geneva Convention, affixing the symbol ©, the name of the author and the year of first publication on a work protected under this convention, published for the first time outside the United States territory, is sufficient to grant this registration. However, registering a Copyright with the American Office has advantages in relation to an unregistered copyright (presumption of validity, obtaining monetary damages).
In France, a note such as "All rights reserved" reminds the public that a work is protected by copyright. However, the absence of a note does not mean that there is no copyright, even if the work is made freely available to the public, such as on the Internet, for example.
What is a trademark?
A trademark is a sign which makes it possible to distinguish your products and services from those of the competitors.
The trademark is the only Industrial Property title which can be renewed indefinitely, in 10-year periods.
Trademarks can cover different forms and in particular:
- verbal trademark: for example, a word or collection of words,
- figurative trademark: for example, a logo,
- semi-figurative trademark: for example, a word or collection of words accompanied by a logo,
- sound trademark,
- three-dimensional trademark: for example, a product packaging,
- a color.
In order to be valid, the sign filed as a trademark must meet the following conditions for validity:
- distinctiveness: the sign must not be the usual designation of the proposed products and/or services,
- availability: the sign must not infringe on the prior rights held by third parties. For example, a trademark, company name or domain name can constitute fully enforceable prior rights,
- legality: the sign must in particular not undermine public order and good character, must not deceive the public...
The assessment of these criteria requires considerable experience and good knowledge of jurisprudence. This is why filing a trademark cannot be considered a simple administrative process. Indeed, filing a trademark is not risk-free inasmuch as it can constitute infringement.
We are exploiting a trademark in a modified form in relation to what was filed several years ago - is there a risk involved?
A few years after filing a trademark, the holder frequently feels the need to modify the exploited sign. For example, the sign incorporates the company's logo and the logo has been changed.
Here again, the advice of specialists is crucial because overly significant changes can cause you to go beyond the protection granted by your former trademark. Furthermore, the changes made could infringe on the Intellectual Property rights held by third parties.
And if your old trademark has not been exploited for 5 years, you may lose both your old trademark and the right to use the new one.