November 2020
Summary
Réalités industrielles
Industrial property
Complete issue
This issue was coordinated
by Pascal FAURE
This issue was coordinated
Introduction: Pascal FAURE,
Industrial property: What does it mean?
From a 1791 act to dematerialization, 230 years of innovation in France
By Steeve GALLIZIA et Serge CHAMBAUD
Ancien directeur du Musée des Arts et Métiers
From Ancient history to the PACTE Act in France, not to mention the French and then industrial revolutions, the protection of industrial property rights has been constantly reinforced, especially during the 19th century. The grounds for doing this have been laid by French legislation and the international framework set up under the Paris Convention in 1883, which established a Union for the Protection of Industrial Property. The conditions have been defined for obtaining and using three sorts of industrial property rights: patents, trademarks, and designs. Patent prior art searches to prove the novelty of an invention, the originality of a design, or the right to use a trademark have brought to light new needs in information retrieval. The French Patent and Trademark Office (INPI) has fostered the conditions for finding information in electronic formats. More recently, procedures have been dematerialized, and information has been made available in open data bases, the reflection of a strategy decidedly turned toward data.
What is an industrial property right?
By Florence GALTIER
Directeur des affaires juridiques et financières de l’INPI
et Maxime BESSAC
Chargé de missions juridiques à l’INPI
As the driving force in economic development, innovation and creation in industry are immaterial by nature. They are legally recognized and protected in France through the grant of a property right as a counterpart to their filing at the French Patent and Trademark Office (INPI) and their disclosure to the public. The owners of patents, trademarks or other industrial property rights thus enjoy major prerogatives related to their inventions or creations, including exclusive use rights. These rights are limited to the national territory and in time, their use and the payment of fees keep them in force. When they expire, the protected creation or invention falls into the public domain.
The PACTE Act and the reinforcement of industrial property in France
By Philippe CADRE et Benjamin DELOZIER
Direction générale des Entreprises
International comparisons of how innovations are protected have pointed to the need for a stronger French patent system. This reinforcement has now been done by enforcing the various provisions on industrial property rights contained in the PACTE Act. One of them has introduced the possibility for the French Patent and Trademark Office to reject a patent application for lack of inventive step; this provision makes patents in general more solid and attractive. The PACTE act also provides for implementing through executive orders an EU directive adopted on 15 December 2015 for modernizing and harmonizing trademark law, thus making it possible to register new types of trademarks. The many advantages for firms arising out of these provisions are explored…
Enforcing industrial property rights
By Sophie DARBOIS
Conseillère à la chambre commerciale, financière et économique de la Cour de cassation
and Laurent MULATIER
Chef du service du contentieux de l’INPI
For the private person or firm who holds them, industrial property rights (mainly patents, trademarks and designs) are a valuable asset to be protected and enforced. These rights ‒ the very conditions for a firm’s development ‒ may be infringed in many ways. They have to be enforced by filing either a lawsuit in the competent court of law or a claim (a new procedure) with the competent administrative authority (the INPI). For a long time, going to court was the only way to effectively enforce industrial property rights, but lawmakers have gradually introduced solutions, some of them in the recent PACTE Act (2020), that are alternative or complementary to lawsuits. The major administrative procedures that may be engaged before the INPI in order to preserve industrial property rights are discussed and, thereafter, the legal actions for doing so.
Trademarks and designs
By Marie ROULLEAUX DUGAGE
Directrice du département des Marques, dessins et modèles de l’INPI
Trademarks and designs are industrial property rights; their common characteristic is that they involve interactions with consumers. A trademark identifies a product or service, and conveys an image designed by the firm for triggering purchases. The appearance of a product is protected by a design; product design attracts consumers to choose the more aesthetic product. The ‟sign” that identifies a product as well as its visual appearance orient consumers by offering them an incentive for making a choice among a multitude of goods on the market. What is actually protected by these forms of industrial property? How to enjoy this protection in France and outside the country? What are the rights and obligations of a trademark owner?
Geographical indications
By Antoine GINESTET
INPI
et Alexandre LÉVY
INAO
Geographical indications (GI), which arose in the wine sector at the start of the 20th century, were gradually extended to other agricultural products and then, in 2015, to the objects produced by manufacturing or crafts. Protected under industrial property law, an IG is an official sign certifying quality and origin. Public authorities thus recognize a product’s origin in a geographical area and places a producers’ organization in charge of managing the GI. Once approved, the organization that presented the list of specifications for proving the product’s specific qualities becomes the manager in charge of defending and promoting the product. In turn, producers accept controls by a specially qualified, duly certified third party. These controls guarantee consumers the product’s conformity with the list of specifications.
Protecting artificial intelligence in France and Europe
By Dr Jean-Marc DELTORN
Centre d’études internationales de la propriété intellectuelle
et Dr Godefroy LEMÉNAGER
Institut national de la propriété industrielle
Artificial intelligence (AI), indispensable for a new industrial revolution, lies at the center of major economic and strategic issues. Substantial investments are being made in these new algorithmic tools, which have to be protected as an intellectual property. Copyright, trade secrets or database sui generis right can successively be invoked; but a patent is the best way to protect the features of these techniques and thus boost innovation in an upcoming field of technology. However bringing AI under the scope of patent law entails precisely explaining whether and under which conditions these algorithms and their applications are entitled to protection in line with both current caselaw and the practices of the European and French patent offices.
Economic issues
Trends in patent filings in France, Europe and worldwide
By Yann MÉNIÈRE
Économiste en chef, Office européen des brevets
The celebration of INPI's 70th anniversary is an opportunity to recall the central place that intellectual property in general, and patents in particular, occupy in the French, European and global economies. It is also an opportunity to put the patent system into perspective in a context of the globalization of innovation and the digital revolution. This article aims to contribute to these reflections, by drawing on trends in patent applications to paint the landscape of industrial innovation in France, Europe and the world.
Firms’ various strategies about intellectual property
By Sophie REBOUD
CEREN EA 7477, Burgundy School of Business, Université Bourgogne Franche-Comté
et Kristin SPECK
Aleph. K, accompagnement à l’innovation et à la création d’entreprise, Lille
Although the system of intellectual property rights often enough comes under question for reasons both economic and societal, its success is beyond discussion: the number of filings has constantly grown. One reason for this is that IP has a strategic impact on creativity, competitive advantages, commercialization and communication. The decisions made by firms about these property rights are related to their decisions about strategies based on the characteristics of an innovation and their choice of a method for cornering the value created by it. The ViaPI model developed for the INPI since 2002 assists with this by analyzing the patterns of revenues generated by an innovation and simulating increases or decreases in these revenues as the innovation enters a competitive marketplace.
A few points for a corporate strategy on intellectual property
By Yann de KERMADEC
Consultant chez Julhiet Sterwen
Intellectual property (IP) is a matter of concern for all firms, regardless of their branch of activity or size. IP strategies are as varied, changing, and adaptable as the corporate strategies of which they are an essential dimension. Using IP is not limited to acquiring and commercializing a set of rights. The information found in patent databases can be put to use to shape a firm’s strategy and the innovations it develops. An IP strategy is, above all, the keystone for managing IP. The three levels of IP management ‒ strategy, organization and qualifications ‒ must form a coherent whole. This implies that designers should learn how to put patents to good use.
Stratégie brevets du Groupe SEB
By Géraldine GUERY-JACQUES
SEB
Témoignage : France Brevets et les start-ups
By Didier PATRY
Directeur général de France Brevets
Industrial property attorneys
By Guylène KIESEL LE COSQUER
Présidente de la Compagnie nationale des Conseils en propriété industrielle (CNCPI)
et Henri BOURGEOIS
Membre du bureau de la Compagnie nationale des Conseils en propriété industrielle (CNCPI)
What are ‟industrial property attorneys”? What are their objectives? The answers to these questions are intended to arouse interest in intellectual property and attract some readers to consider working in this field. The origins of the profession of IP attorneys and their assignments are discussed along with the major challenges faced by the actors of innovation…
Industrial property, innovative firms and the actors of innovation
By Arnaud DELAUNAY
Direction générale des Entreprises (DGE)
A key action of public authorities is to support the ecosystem of innovative firms, in particular through a set of measures on the creation and development of startups and ‟scaleups”. Industrial property rights enable firms to protect and draw financial value from their immaterial assets. Such rights ‒ increasingly important in the economy ‒ are the object of ever more intense competition worldwide. They correspond to complex legal instruments with various potentials under condition that a strategy for turning them into an effective tool has been implemented to help stakeholders understand them and control their many economic applications. The government has undertaken several actions to make it easier for firms, in particular startups along with small and medium-sized companies, to make use of industrial property.
Educating professionals in industrial property
By Martine CLÉMENTE
INPI
Yann BASIRE
CEIPI
et Antoine DINTRICH
IEEPI
Industrial property rights are now recognized as indispensable for innovation, but they are not well known. Making up for this is an objective of the training programs on industrial property taught by the INPI. Training for professionals in this field has long been reserved for law students undergoing specialization. However its scope has now been enlarged to various occupations: researchers, of course, but also personnel in procuration, management, marketing, finance and human resources. This turnabout has had an impact on both the contents taught and on teaching methods.
The fight against counterfeiting: France’s initiatives
By Richard YUNG
Sénateur LREM des Français de l’étranger et président du CNAC
et Christian PEUGEOT
Président de l’UNIFAB
An alarming statistical picture is drawn of counterfeiting around the world, especially in Europe and France. Given this plague with its many tentacles, what measures have public authorities and firms taken? The quality of cooperation between the principal public and private actors on the international scene is decisive for this fight against counterfeits. In France, the National Committee against Counterfeiting (CNAC) and the Union of Manufacturers (UNIFAB) have pooled their efforts for raising awareness about this phenomenon, obtaining changes in legislation and conducting actions on the international level.
The national and international governance of industrial property
The French Patent and Trademark Office faces new challenges
By Sylvie GUINARD
Présidente du conseil d’administration de l’INPI
et Pascal FAURE
Directeur général de l’INPI
In an environment where industrial property rights are a strategic item of utmost importance for both firms and nation-states, the Institut National de la Propriété Industrielle (INPI) intends to take part in France’s efforts to boost its innovators. The INPI offers legal instruments that can be used to protect innovations and profit from them. It also assists entrepreneurs as they start creating wealth. In 2018, the INPI adopted a strategy running up to 2025 with a national and international scope and the motto ‟Industrial property to make our economy dynamic”.
The African Intellectual Property Organization, an organization with a regional dimension
By Denis L. BOHOUSSOU
Directeur général de l’Organisation africaine de la propriété intellectuelle (OAPI)
Following independence, young states in Africa wanted to set up a regional office of intellectual property. This is evidence of how important this issue is for economic development. How did this office become a full-fledged regional organization: the African Intellectual Property Organization (OAPI)? What are its assignments and ambitions for coping with contemporary issues?
The long-awaited unitary patent, an effective one-stop-shop for innovators in the EU
By Amaryllis VERHOEVEN
Head of the Intellectual Property Unit at the European Commission (DG GROW F3)
et Denis DAMBOIS
Commission européenne (DG GROW F3)
The European Union has been improving and unifying its intellectual property (IP) systems since several decades, both by harmonising national legislations and creating unitary rights. As regards patents, the European patent system has undisputable advantages compared to the national procedures, but suffers from a purely national dispute resolution. This shortcoming will soon be addressed by the future unitary patent system, and more precisely by the Unified Patent Court (UPC), which will constitute the main strength of the new system once it will be operating. Two unexpected events have unfortunately disturbed its launch: on the one hand Brexit, which will prevent the UK’s participation in the new system, and on the other hand the constitutional challenge initiated against the decision of ratification by Germany of the UPC Agreement, which has delayed that ratification. One may however hope that the unitary patent system may be concretely launched in a near future, and possibly as soon as 2021.
The role of IP in Europe's industrial renaissance
By António CAMPINOS
Président de l’OEB
This article highlights the need for an industrial renaissance in Europe and explores how intellectual property can help its economies to recover from the Covid-19 crisis. Studies show that innovative small and medium-sized companies (SMEs) are major growth drivers in Europe, so supporting them is now more important than ever. The EPO helps SMEs to commercialise their ideas by raising IP awareness, sharing patent knowledge and statistics, and with its longstanding commitment to the unitary patent, which will make IP rights more accessible. The article also explains why the EPO is a first-choice provider of patent protection and describes the measures taken to support its users during the Covid-19 crisis. Going forward, it emphasises the value of co-operating with other national IP offices to find smart, sustainable solutions to the crisis and build an even stronger IP system.
The European Union Intellectual Property Office (EUIPO)
By Christian ARCHAMBEAU
Directeur exécutif de l’EUIPO
The European Union Intellectual Property Office (EUIPO) is the largest of the EU’s decentralised agencies and has broad responsibilities in the area of Intellectual Property. The agency is based in Alicante in Spain and is tasked with administering EU trade marks and designs, as well as cooperation, research, communication and some aspects of enforcement related to all types of IP Rights. The EUIPO’s next Strategic Plan includes reinforced measures to support EU SMEs. This article describes the agency’s origins and growth and the urgent initiatives being introduced in response to economic damage caused by the Covid-19 pandemic.
The World Intellectual Property Organization
By Sylvie FORBIN
Vice-directrice générale, responsable du secteur du Droit d'auteur et des industries de la création, OMPI
et Olivier HOARAU
Responsable du pôle juridique au sein de la direction Juridique et financière de l’INPI
The World Intellectual Property Organization (WIPO) has been promoting the protection of intellectual property around the world within the UN system for more than fifty years, with the main objective of establishing common rules or at least ensuring convergence of national and regional regulations for intellectual property protection.