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As an overseas patent applicant, how can I obtain patent protection in France?


There are two ways to obtain patent protection in France. One way is to file a French national patent application with the French Patent Office (the Institut National de la Propriété Industrielle or INPI) by the Paris route (claiming the priority of a filing in the preceding year, in a country party to the Paris Convention).The other way is to file a European patent application with the EPO (European Patent Office) -bearing in mind that this can be either filed by the Paris route, or as a Euro-PCT application-, and then designate France in this EP application

Can I enter national phase in France directly with a PCT application?


No. France, like a certain number of other European countries, has “closed off” the direct national phase entry from a PCT application. Therefore, an overseas patent applicant wishing to obtain patent protection in France on the basis of a PCT application, must file a European (EP) patent application with the European Patent Office (EP), and designate France in this EP application.

How does national procedure work before the French patent office in the case of a French national patent application?


French national patent applications, which must be filed in French, are the subject of prior art searches presented in a Preliminary search report, accompanied by a written opinion.

If the preliminary search report contains a priori highly relevant documents cited in categories “X” or “Y”, the applicant must provide amendments and/or arguments to the French Patent Office in order to justify the patentability of the claims as maintained or amended.
Although inventive step (non-obviousness) is a criterion for patentability under French national law, the French Patent Office is not entitled to reject a patent application for lack of inventive step. France has adopted an intermediary step between a system of complete examination and a system with no examination, which allows Applicants greater flexibility to amend the claims with respect to the prior art, possibly by communicating with the Examiner, and without the risk of rejection for lack of inventive step. This makes it possible for French patent applications to have a broad main claim covering several embodiments which could not have been covered in a single European patent application. The response to the preliminary search report is normally the final opportunity given to the Applicant to amend the claims.

What are the main stages during examination of a patent application by the EPO?


After filing of a European patent application (either a Euro-PCT application, or an EP application filed by the Paris route), the handling procedure before the EPO can broadly be split up into (i) an administrative phase involving publication of the application; (ii) a prior art search phase; (iii) a substantive examination phase; and (iv) a granting phase. It is now standard practice for the same examiner to carry out both the search (ii) and examination (iii). Prior to the grant of a European patent, a translation of the allowed claims into the other two official languages of the European patent office must be provided. Therefore, if the application is in English, translations of the claims into French and German are required.

How can patent protection be obtained in France following the grant of a European patent?


In order to obtain patent protection in France arising from a granted EP patent, France must have been designated in the European patent application.
French, English and German are the three official languages of the European Patent Office. This means that any EP patent application is prosecuted in one of these three languages. For the grant of an EP patent, translations of its claims in the other two official languages must be filed at the EPO. This means that the description of any granted EP patent is in one of the three official languages and its claims in the three languages.
The London Agreement on the grant of EP patents came into force on May 1, 2008. EP patents granted as from this date automatically take effect in France, without any French translation of the description being necessary. This is of course subject to the payment of renewal fees at the INPI (French Patent Office). It is advisable to appoint a French representative in order to ensure that any communication from the INPI relating to lack of payment or insufficient payment of such fees is duly received. To enforce the EP patent against an identified third party, the French translation of the description must be filed before the competent Court or provided to the defendant.

How can a third party challenge a European patent?


In the nine months following the grant of a European patent, any party, i.e. a natural person or legal person (company), either European or not, can file an opposition. The opponent must provide all the detailed grounds and documents upon which opposition to the patent is based, in a communication to the EPO arriving before the expiry of the nine-month opposition period. Opposition proceedings almost always terminate with oral proceedings, in which the fate of the opposed patent is decided after a hearing involving the opposition division and the two parties. The decision taken by the EPO in this case is legally effective in all the European contracting states where the European patent has been brought into effect (validated). It is also possible, including before grant of the European patent, to file third-party observations, although in this case the third-party does not become a party to proceedings.

How is validity judged during patent litigation in France?


The judge is required to apply the criteria of patentability laid down in the French law on patents, which are the same as in the European Patent Convention (EPC). If the subject of patent litigation in France is the French part of a granted European patent, the judge refers to the EPC. For judging on patent validity, French courts are influenced by the approach of the European Patent Office and they tend to harmonize their practice with this approach. In the past, a certain number of European patents have been the subject of parallel litigation in several European countries, and validity and infringement have been judged differently in separate countries, although the same EP patent was at the core of the dispute.

How does the French “infringement seizure” work?


In France, a patentee with valid grounds (prima facie infringement by another party) can request the authorisation from a judge in a summary hearing to proceed with an “infringement seizure” (saisie contrefaçon). Under this system, a bailiff (huissier) has the right to enter, without warning, the premises of the party presumed to be infringing the patent in suit, and proceed with the description of infringing objects and processes and also seize relevant documents.

What are a company’s main distinctive signs?


The main distinctive signs are trademarks, official (registered) company names, business names (trading names), signboards and appellations of origin. A trademark is a sign used to designate products or services with the aim of distinguishing them from competing products and services: A trademark enables customers to identify products and services as coming from a particular company. Rights in a trademark are acquired by making an application for registration of the trademark. The official company name serves to identify a company as a legal person in a manner comparable to the way in which a physical person is identified by their name. Company names are set by the company’s statutes and, starting from the date at which the company is registered in the French National Companies’ Register, they can be used against a third party. The business (trading) name serves to identify the company’s business. It is acquired and maintained by public use. It can be recorded in the National Companies’ Register. The signboard serves to identify a commercial establishment in its geographic locality. Once again, rights in a signboard are acquired and maintained by use. A signboard can be recorded in the National Companies’ Register. The appellation of origin is a place-name that is used to designate a product which comes from that place and whose quality and properties are due to human and natural factors applicable at that place. An appellation of origin is reserved for products associated with a region and designates a collective right of use which cannot be assigned, is inalienable and is imprescriptible.

What is a valid registered trademark and who can obtain one?


French law allows the registration as a trademark of any distinctive sign which can be represented graphically, notably: names, including personal names and geographic names; signs which are sounds; figurative signs characterising a service or a product or its packaging; and arrangements, combinations or particular hues of colour. The trademark must not be deceptive, or contrary to public order or morals, or forbidden from use. The trademark must be distinctive, that is, it must not consist exclusively of a term which is necessary to designate this product or service, or generic to or habitually used for this product or service, nor of expressions describing a property of the products or services, nor should it have a form which is imposed by the nature or the function of the product or which confers on the product its substantive value.

Why, and how, should you check the availability of a distinctive sign before using it or applying to register it in France?


In France, distinctive signs are covered by monopolies that are protected either by the law or by rules derived from usage or jurisprudence. This protection enables the rights-owner to bring a legal action for infringement or for unfair competition against anyone commandeering his rights by reproduction or imitation of his distinctive sign. For example, a company can take action against a third party which has taken up its company name as a trademark if there is a likelihood of confusion in the public's mind. Similarly, the proprietor of a registered trademark can stop a company from using his registered trademark as its business name if there is a likelihood of confusion in the public's mind. Likelihood of confusion is not required when the trademark is identically reproduced for identical goods and/or services to those designated in the registration. With regard to trademarks in particular, in order to be “available” it must not lead to confusion with an identical trademark that has been registered for identical or similar products/services, nor prejudice prior rights including: company names, trading names, appellations of origin, copyright, the name or pseudonym of a well-known third party, or even the name, image or the reputation of a territorial unit. This is why, before adopting a distinctive sign, it is important to verify that the sign that has been chosen is available, that is, it has not already been appropriated by a third party. This checking is particularly important because when an application is made for a trademark to be registered the INPI (French Patent and Trademark Office) does not carry out searches among trademarks, company names, trading names or signboards; neither does the National Companies Register do so at the time of registration of a company. It is the company adopting the distinctive sign which may incur legal liability based on its choice. There is no exhaustive searching system which enables the full set of conflicting prior rights to be detected. However, the risk of potential conflict can be limited by a search among identical or similar registered trademarks, supplemented, in appropriate cases, by a search in the National Companies Register among the company names, trading names and signboards.

Where and how is a trademark protected?


Rights in a trademark are territorial rights obtained by making an application for registration. Thus, it is appropriate to apply for registration of the trademark in the country, or countries, where the designated products and services will be manufactured and/or commercialised. For French businesses, usually the trademark application is filed in France first of all. Six weeks after its filing date the French national trademark application is published. In the two months after publication, owners of earlier trademarks can oppose the registration of the trademark which is the object of the application. The opposition procedure is an administrative procedure which is handled by the INPI and, if the opposition is considered to be justified, can lead to the partial or total rejection of the application for registration. The opposition procedure takes 6 months. Owners of earlier trademarks who have not taken action in an opposition procedure can nevertheless take action later on to oppose the use of the later trademark, by bringing an infringement action – provided that they have not tolerated the use of the later trademark for 5 years or more. Similarly, owners of other distinctive signs (for whom the opposition procedure is not available) can, at any time, take action against the owner of a trademark which damages their rights. Therefore, it is strongly recommended to carry out searches for earlier conflicting rights before adopting a particular trademark. A trademark can also be the object of a Community trademark application, without any earlier application in France. A Community trademark application enables protection to be obtained in the 25 countries which are members of the European Union, via a single legal document. Once an application for registration of a trademark has been made in France, or at a Community level, the trademark application can be extended to other countries. If the foreign filings are made within a 6 month period (“the priority” period) beginning on the date of the initial filing, the trademark application in the foreign country benefits from the filing date of the original French or Community application. By making a single so-called “international” application, the trademark can be extended, at the applicant’s choice, to countries which have adhered to the international trademark system. These countries include: the European Union, the U.S.A., China, Japan and, soon, Canada. For countries which have not signed up to this “international” system, protection can be obtained by filing a national trademark application. Your French Intellectual Property Attorney will assist you in the choice of the protection which is best suited to your needs, at the most advantageous cost.

What protection and rights apply to a design?


In French law, a design can obtain protection on a number of different bases: the legal provisions relating to designs and models for any new design which has an individual character, the legal provisions relating to copyright (provided that the design is original and that the creation date can be proven), or even using trademark law (if the design is distinctive for particular products and services). A feature of French law is that it allows these different types of protection to be held cumulatively. In order for a foreign applicant to be able to claim the benefit of copyright in France it is necessary that his home country should provide for protection of designs by copyright. Thus, if a particular creation can be protected in the home country solely under design law, no copyright can be claimed in France and, consequently, unless a design application covering France is filed for this creation, it will have no legal protection in France. A first application for design registration, made in France, can be extended to other countries using the so-called “international” procedure. A Community design application could be filed directly, in order to obtain a single legal document giving protection for all countries in the European Union. Companies often use independent designers for creating the styling of a product or for creating a logo. It is important for the company to obtain not only a right to use the physical property corresponding to the object or the logo that has been created but also the incorporeal property in this creation. For this purpose, it is important to make certain that the creation will be available exclusively to the company - by using a contract which provides, notably, for the assignment of the right to reproduce the design - before proceeding to registration of the design. The same kind of contractual solution can also be used in the context where a creation has been designed by employees within a company.

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Beau de Loménie Marseille: a new era is beginning

 

2018/2019 has marked an important stage for the first branch office that Cabinet Beau de Loménie opened, in 1968, outside the Paris region: a new head, Olivier BOURA, has taken up post, new experts have joined the Patent, Trademarks and Designs practices and the office has been relocated from the Prado district to the Place Castellane (...).

Read the entire press release here.

Cabinet Beau de Loménie - 158 rue de l'Université - F75340 PARIS CEDEX 07 | T : +33 (0) 1 44 18 89 00 | F : +33 (0) 1 44 18 04 23

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