Les brevets d'invention

There are as many reasons to file a patent as there are business strategies.

The patent is a multi-faceted tool capable of increasing the value and influence of a company, while ensuring security of development.

As an intangible asset of the company, the patent generates economic benefits which can be direct (increase in market share, controlled prices) but also indirect (patent licenses).

A patent filing company also conveys to its customers and partners the image of an active and innovative company, capable of transforming existing solutions into new solutions.

In addition, the patent, as a right to prohibit, confers on its holder a monopoly of exploitation. In other words, the scope of a granted patent defines an area prohibited from exploitation by a third party or a competitor without the prior agreement of the holder.

Finally, patents have today become essential for fundraising.

ETNA guides applicants, ETIs, SMEs, Start-ups for all legal and technical questions relating to invention patents, and provides tailor-made advice to business leaders so that their patent decisions remain in line with their strategy. of development.

There are two types of patent prior art searches which are both independent and complementary.

The first step is to assess the risks associated with the infringement of an active patent of a third party through the exploitation of its invention in the targeted territories. This question is essential since it sets the possible operating framework for the company, regardless of whether a patent is taken out or not. These searches are limited to the territories of intention and the analysis of freedom of exploitation takes care to appeal to the national laws of the territories in question to ensure the absence of risk of counterfeiting, or to precisely define its contours.

Patent prior art searches are also conducted to assess the patentability of an invention. Searches for previous patent publications are carried out on the basis of global data and the patentability analysis uses know-how for assessing patentability resulting from the comparison between the invention and each of the patent publications identified.

In the event that a patentability analysis leads to the conclusion that the invention is not patentable, ETNA supports companies in developing their invention in a patentability-free zone.

Patent prior art searches and their associated analyzes make it possible to limit the risks of being an infringer, but also to protect against a direct rejection of the patent application by the patent offices.

The drafting of a patent application follows precise editorial rules. To do this, it requires experience on the part of the drafter to detect the essential characteristics of the invention to be claimed so that the patent cannot be circumvented. This is why it is essential to use an industrial property attorney to draft a patent application.

ETNA also takes into account the strategy of the client company when drafting patent applications. For the same invention subject to two different development strategies, the wording will not be substantially the same. In particular, the medium-term evolution of the invention, current and future partnerships, but also the operating modes envisaged by the company on a defined market will be taken into account.

To obtain a patent issued by the patent offices, it is essential to fully describe the invention claimed in the patent application. This is a legal requirement called the “sufficiency of description requirement”.

ETNA strives to support applicants so that the information disclosed in the patent application is sufficient to satisfy the aforementioned requirement and to obtain a solid patent, without disclosing related information that may constitute valuable know-how.

Finally, ETNA adapts to its clients and the technical particularities of the inventions by providing, where appropriate, a period of discussion around a draft of claims before drafting the complete text, in order to ensure that expectations in terms of protection legal framework of the company and the patentable core of the invention are well in phase.

Doctors of science, chemists and physicists, ETNA's industrial property attorneys deal with a wide spectrum of technical fields. We will cite, on a non-exhaustive basis:

The mecanic
Electronics
Chemistry
Telecommunications
Mobile applications
The materials
Software and inventions developed by AI
Optics
Fluid Mechanics
The construction

To obtain a patent issued by a patent office, it is necessary to demonstrate that the invention is new and inventive in relation to the state of the art constituted by the results of a prior art search carried out by the administration.

This most often involves developing defense arguments in matters of patentability by demonstrating the novelty and inventive activity of the invention, these arguments having to be stated according to a methodology specific to each office. It may also involve redefining the invention by modifying the claims so as to deviate from the relevant prior art.

ETNA is a French and European agent, and thus directly represents its clients before the INPI for France, the EPO for Europe and WIPO for PCT international patent applications.

ETNA also has a loyal network of foreign colleagues throughout the world to ensure the protection of inventions by patent outside Europe. During a patent grant procedure abroad, ETNA and its colleague work in close collaboration. ETNA transmits to its approved colleague the information relating to the invention but also to the business strategy defined around this invention, and the national agent respects the rules specific to its legislation regarding the defense of patentability to have the patent issued. patent.

Finally, administrative patent procedures involve rigorous monitoring of the numerous deadlines to be respected and formalities to be completed. ETNA strives to explain the different administrative steps by addressing each client in a personalized way to actively involve them and with knowledge.

After the grant of a French or European patent, any third party has a period of 9 months to file an opposition to this newly issued patent. Unlike the prior administrative procedure which led to the grant of the patent, the opposition is an inter partes procedure which pits the patent holder against one or more opponents before the opposition division of the office.

ETNA has solid experience in patent opposition.

It is not only a question of defending or attacking in the area of patentability, but of compiling a complete file on the legal and technical levels with knowledge of the applicable case law.

Finally, it is a question of defending the interests of your client during the oral procedure which finalizes the opposition procedure and at the end of which the office gives its decision.

Opposition procedures can be of a strategic nature leading or steering negotiations with partners or patent holders. As with obtaining a patent, ETNA does not dissociate the opposition procedure from the company's interest and strives to coordinate the requirements of the procedures with the company's priorities.

The European Patent with Unitary Effect (BU) and the Unified Patent Court (UPJ) entered into force on June 1, 2023.

To date, 17 European countries are covered by the unitary patent and participate in the JUB: Germany, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands , Portugal, Slovenia and Sweden.

The Unitary Patent is a new European patent title offering unified protection in these 17 member states.

The JUB is a new international court with jurisdiction to settle European patent disputes in these 17 member states.

Since June 1, 2023, it has been possible to request the unitary effect of a European patent and the JUB has, for the 17 participating countries, exclusive jurisdiction for disputes relating to European patents, in particular invalidity actions and infringement actions.

The JUB has jurisdiction over a unitary patent but also any European patent already issued and validated (European patent without unitary effect), as well as for European patent applications currently under examination before the EPO.

During a transitional period of at least 7 years, for European patent applications and European patents without unitary effect, the applicant for the invalidity action or the patentee requesting the infringement action may choose to initiate his action before the JUB or before the national courts.

During this transitional period, to avoid the exclusive jurisdiction of the JUB and avoid any action for invalidity brought before the JUB, holders of European patent applications and European patents already issued without unitary effect may request an “opt-out” .

An “opt-out” results in only national courts remaining competent to deal with disputes relating to the European patent application or the European patent without unitary effect. If, subsequently, the holder of a European patent wishes to initiate an infringement action before the JUB, he may withdraw his “opt-out”.

Only duly registered representatives are authorized to intervene before this new jurisdiction.

Three of ETNA's members have been recognized with this capacity: two industrial property attorneys and a lawyer.

ETNA is therefore ready to represent its clients in all proceedings before the JUB.