Patent law
A patent protects innovation by granting a monopoly on the exploitation of a product or process that provides a new technical solution to a given problem. It confers on its holder an exclusive right, allowing them to prevent anyone from implementing the protected invention without their authorisation.
Patents are strategic assets that can be used to:
- secure market share;
- generate revenue through licensing;
- enhance the value of your company;
- benefit from tax advantages.
How to protect your invention?
French patent
Territorial scope
The French patent issued by the French IP office (INPI) covers the French territory.
Jurisdiction
The Paris Court of First Instance has exclusive jurisdiction to hear civil actions relating to French patents.
European patent
Territorial scope
The European patent, issued by the EPO, results in a bundle of national patents among the member states of the European Patent Convention (EPC) or those that have signed extension agreements. The scope of protection will depend on the number of countries designated.
Jurisdiction
National courts and the Unified Patent Court (UPC) have jurisdiction to hear actions relating to European patents.
Unitary patent
Territorial scope
The unitary patent, issued by the EPO, offers indivisible protection throughout the territories of the States that have ratified the Agreement on a Unified Patent Court (UPC).
Jurisdiction
The Unified Patent Court (UPC) has sole jurisdiction to hear actions relating to Unitary patents.
A patent is a title issued by a competent authority, such as the French IP office (INPI) or the European Patent Office (EPO). It grants its holder exclusive rights of use for a limited period of time, generally 20 years. To be patentable, an invention must be new, inventive and capable of industrial application.
However, obtaining a patent is not enough to guarantee the commercialisation of an invention. To ensure its effective exploitation, it is necessary to take into account the specific requirements related to product law (administrative formalities, labelling, advertising, packaging) and to ensure that the technology complies with the applicable sectoral regulations. product law (administrative formalities, labelling, advertising, packaging) and to ensure that the technology complies with applicable sector regulations.
Who owns an employee's invention?
When an employee makes a patentable invention, legal questions may arise, regardless of whether the invention has been patented.
These questions mainly concern:
- the ownership of the invention: does it belong to the employee inventor or to the company that employs them?
- the classification of the invention: is it a work-related invention or a non-work-related invention?
- the inventor's remuneration: what financial compensation is due?
- the status of inventor in the event of incorrect designation or omission of an employee from the list of inventors on the patent.
In practice, most of these disputes are initiated by an employee after they have left the company (resignation, dismissal, retirement). They may also be part of a wider labour law dispute.
In the event of a dispute, the matter may be referred to the National Commission for Employee Inventions (CNIS). The CNIS's decision may be challenged in court.
Unitary Patent Court (UPC)
The Unified Patent Court (UPC) is a European jurisdiction ruling exclusively on patent litigation. It creates a single, centralised court system for disputes concerning patents with unitary effect and traditional European patents, except in cases of voluntary withdrawal from the system (opt-out).
The UPC makes it possible to settle disputes over the validity or infringement of patents in several European countries at once, without multiplying proceedings before each national jurisdictions. This should reduce costs and procedural delays. Thanks to a decision that is recognised in all Member States, it enhances legal certainty and predictability for patent holders and third parties.
The UPC comprises several divisions:
- A Court of First Instance with local, regional and central divisions,
- The central division is based in Paris, with sections in Munich and Milan,
- A Court of Appeal based in Luxembourg,
- A unified registry for the processing of proceedings.
The UPC has jurisdiction to hear:
- Infringement actions,
- Actions for patent invalidity,
- Requests for provisional measures (seizure, injunction, prohibition),
- Actions for declarations of non-infringement,
- Actions for damages,
- Appeals against EPO decisions concerning unitary patents.
Since the establishment of the UPC, the choice between a traditional European patent and a Unitary patent, or between national jurisdictions and the UPC (opt-out), must be assessed in light of industrial strategy, the territories targeted, and the litigation risk profile.
Protective letters
Protective letters are inspired by the German system. They are preventive statements sent to the UPC by a company to protect itself against provisional or protective measures that could be requested ex parte (without prior adversarial proceedings) by a patent holder. Protective letters are valid for six months and can be renewed once.
A protective letter allows a company to put forward its defence arguments in advance (no infringement, patent invalidity, no urgency, etc.) in the event that an application for seizure or injunction is submitted to the UPC without a prior hearing. This mechanism helps to restore adversarial proceedings within the framework of the accelerated procedure provided for by the UPC for emergency measures.
When should you file a protective letter?
- You fear that you may be the target of an application for provisional measures such as an injunction, seizure or marketing ban before the UPC;
- You have received a formal notice or been identified as a user or distributor of a potentially infringing product;
- You are exploiting a product or process patented in certain countries covered by a Unitary patent or a European patent which is not subject to opt-out.
What does a protective letter contain?
- The identity of its applicant;
- The identity of the potential patent holder concerned;
- Technical and legal arguments regarding the absence of infringement, the invalidity of the patent or the absence of urgency;
- Any useful supporting documents (technical reports, contracts, etc.);
- A formal request to the UPC not to rule ex parte without hearing it.
The protective letter becomes accessible to the patent holder only if the latter actually files a claim against the applicant of the protective letter.
The protective letter is an essential strategic tool in the context of the UPC, enabling companies to anticipate infringement proceedings and defend themselves effectively in emergency proceedings. It is a proactive defence tool, particularly in sectors with a high risk of technological or competitive litigation.
The role of the patent lawyer
Advisory & Strategy
We recommend in the strategy to enhance the value of patents, including by the audit from your portfolio ; the due diligence for transactions M&A or investmentsas well as determination the inventor's status and ownership of rights on the invention.
Contracts & Valuation
We assist you in negotiating and drafting contracts for the assignment, licensing and co-ownership of patents; technology transfer; sharing know-how; consortium agreements; R&D contracts and those relating to employee inventions.
Defence & Litigation
We defend your interests before the competent authorities and jurisdictions, including the CNIS and the UPC, in disputes involving infringement, ownership claims, invalidity actions, declarations of non-infringement, provisional measures, or employee inventions.
We assist you in the preparation and strategic drafting of protective letters, their filing with the UPC, and the management of litigation if proceedings are ultimately initiated by the owner. We work closely with patent attorneys and foreign correspondents.