PROXiP can represent you before the following offices: - the European Patent Office - the French Patent Office (Institut National de la Propriété Industrielle) - the Dutch Patent Office (Octrooicentrum Nederland) - the World Intellectual Property Organisation (WIPO) - the European Union Intellectual Property Office (EUIPO - ex Office for Harmonisation in the Internal Market OHIM / trademarks, designs and models) PROXiP can also represent you before other offices, e.g. the United States Patent and Trademark Office (USPTO), via its international partners. We offer a vast range of services: Acquisition of patent rights Our services in the field of acquisition of patent rights obviously include the basic elements:     * writing a patent application (+) A well-drafted patent application is fundamental to obtain a patent that is commercially interesting and robust enough to withstand possible third-party attacks. A well-drafted patent application considerably reduces the risk of a third party or a judge validly interpreting one or more terms and expressions in a restrictive way. In addition, a well-drafted patent application reduces the costs related to the grant procedure, especially if the patent is to be filed in different countries. An international approach is essential: patent practices vary from one country to another. A style suitable from the point of view of European law is not necessarily suitable from the point of view of American law, and vice versa. A well-drafted patent application is all the more important because no additional matter may be introduced once the application has been filed. The application lays down the bases for exploitation of the resulting patent (see Q&A "how to exploit a patent").     * filing a patent application (+) Filing is a formal operation that involves correctly completing various forms required for application and payment of the application fees. Most patent applications handled by PROXiP are filed electronically, since this is the most modern and fastest method. In this case, a filing receipt is obtained immediately. This applies to filing with the offices mentioned at the top of this page. We file with other offices via our international partners.     * entry of an international application into national/regional phase (PCT) (+) Entry into national/regional phase is a formal operation similar to filing. A translation may be required. The translation quality is essential; a poor translation may cause problems in the remainder of the procedure and, in particular, problems during exploitation. Eventual modifications, which are still possible at this stage, should also be considered. For entry into European phase, the claims should be adapted to suit European practice. Typically, this may arise when a first patent application has been filed in the US according to the practices customary under American law. The European Patent Office, for example, generally rejects multiple independent claims in a given category. Also, additional fees are due if there are more than fifteen claims. Keeping a long list of claims, which may be justified in certain cases, is expensive.     * replying to official letters during the grant procedure (+) The Patent Office is likely to raise substantial and/or formal objections during the grant procedure. In particular, the Office may raise objections related to novelty and inventive step, referring to one or more prior documents. A proper analysis of the cited documents is essential: does the application need to be modified, in particular the claims? Unnecessary modifications may restrict the scope of the claims. If modifications prove to be necessary, extreme care must be taken. Limiting your claims excessively could have a negative impact during exploitation. If a modification has no basis in the application as filed, your patent may be declared null and void. In addition, solid arguments should be developed to demonstrate the novelty and inventive step and should respond to other objections, if any, raised by the Office. This work should typically be carried out by experienced specialist.     * payment of fees due during the grant procedure (+) Various fees are to be paid during the grant procedure, in particular when dealing with the European Patent Office. Each fee is payable within a certain delay. Failure to pay on time may lead to extra fees and possibly the irrevocable loss of the application filed. We propose rigorous follow-up of the delays.     * translation of the claims of a European patent into French (+) When your European patent is granted, the European Patent Office requests a French translation of the claims if the language of the procedure was not French. The translation quality is essential; a poor translation may cause problems with respect to exploitation of your patent on French territory. According to French law, the claims translated into French are applicable. They define the scope of the patent if the translated claims are more limiting than those in the language used before the European Patent Office. A poor French translation may therefore reduce the scope of your European patent on French territory. You are entitled to correct a translation error at any time, but the effects are not retroactive.     * validation of a European patent granted in the various designated countries (+) The fact that a European patent has been granted does not automatically mean that this patent is valid in all designated countries. It is a question of languages. According to the London protocol, a translation may need to be filed in a designated country whose office language is not one of the official languages of the European Patent Office: French, English and German. The claims must be translated into the official language of the designated country. PROXiP can handle any translations required to validate your patent in the countries of your choice. For The Netherlands, PROXiP prepares translations into Dutch and files them before the Dutch Office electronically. Our services also include numerous other aspects, concerning the acquisition of patent rights:     * patentability of an invention (+) Before starting to write a patent application, you should ask yourself a few questions about the invention concerned. Does the invention concern a field that allows protection by patent? Other questions concern the novelty and the inventive step. Inventors/applicants can use the search tools available free of charge on the Internet to identify prior documents in the field of the invention (see our Q&A section). This type of "free" search gives an initial rudimentary idea of the novelty and inventive step. This rudimentary search, however, cannot be compared with that carried out with the Patent Office after filing a patent application. Even if the search was carried out by a patent firm, it does not have the authority of an official search. The following two approaches should therefore be evaluated: invest in a paying search before filing, or invest directly in a patent application that triggers the official search, which is relatively inexpensive in France.     * ownership of an invention (+) Another question to be considered before filing an application: who made the invention? Who is entitled to file an application? Are there any assignments to be made by contract? Only specialists who have a thorough knowledge of the applicable law are in a position to answer these questions correctly. Co-ownership is an issue that deserves special attention. French legislation is extremely restricting in this respect. Nevertheless, it does not provide answers to all the questions that may arise in cases of co-ownership. For example, who pays for the grant procedure? How should we deal with questions concerning the acquisition of patent rights, for example the countries of filing, and questions concerning exploitation? A co-ownership contract that foresees the various questions and provides answers should be signed. Conflicts may arise if there is no co-ownership contract or if it is incorrectly written.     * filing strategy (+) The "filing strategy" aspect is vast and includes several questions: What to file? Who files? Where to file? How to file? These questions are related to other aspects: your commercial activities (your business), the budget available, and even fiscal aspects (a patent, and even a patent application, represents an intangible asset, which should be recorded on your company's balance sheet). The question "what to file?" is relevant for a company generating several inventions, which cannot all be patented due to cost considerations. The question "who files?" is related to the question of ownership and to the tax aspects. The question "where to file?" refers to a set of countries and regions where it is commercially and strategically interesting to obtain patents. You do not have an unlimited budget: the choice of country should be made intelligently. Finally, the question "how to file?": there are several ways to create a patent family. For example, take the case of a French company filing a first application with the French National Institute of Industrial Property. The company can file it as a French patent application or as a European patent application. Both have their advantages and disadvantages. Another example, a European company can choose the language for an international patent application (PCT). The choice of language may have an impact in terms of rights. One final point regarding the question "how to file?". In case of extreme urgency or if there are strong doubts as to the benefit of the invention, a provisional patent application may be filed, without paying the official fees. "Provisional" filing is an inexpensive way of obtaining a priority right, valid for 12 months, with a relatively modest scope due to the provisional nature of the document. Consequently, provisional filing cannot replace filing of an application written by specialists, which confers better rights. Furthermore, to initiate a patent grant procedure provisional filing must always be followed by filing with payment of the official fees. This type of filing should therefore be used with caution.     * employee invention (+) In numerous countries, patent laws include measures concerning an employee invention. French law is extremely detailed in this respect. It identifies a number of cases according to various criteria, for example, the work contract, the actual functions entrusted to the employee and the company's field of activities. The applicable case must be determined for each employee invention. The resulting administrative operations must then be performed according to the law and the other provisions referred to under the law. Depending on the applicable case, additional compensation must be paid to the employee inventor or the employer must pay the employee a "fair price" to be assigned the patent right. Failure to comply with the applicable provisions may have a damaging effect, even many years after the employee made his invention.     * acquisition by assignment ("purchase") (+) You can "purchase" a patent, a patent application and even an invention that has not yet been filed. This type of assignment must be formalised by a written contract, duly signed by all parties concerned, otherwise it could be declared void. A certain number of points should be checked before signing or even writing the contract, especially regarding ownership. Is the vendor the true owner and entitled to assign the patent, the patent application or the invention? There is also the question of the price and its payment. The contract should be carefully drawn up, it should correspond to the assignment concerned and its context. The contract should also foresee several questions that may arise later and provide clear answers. Using a standard contract blindly is dangerous, since it may be incomplete or incorrect on a number of points. By obtaining advice from a specialist you will avoid pitfalls.     * confidentiality (+) It is in your own best interest to keep your invention confidential until the date when your patent application is published. This date is generally 18 months from the date of first filing. You may, however, need to communicate information concerning your invention to third parties before this publication date for business reasons, etc. In this case, each third party should be bound by an obligation of confidentiality via a contract. This confidentiality contract should stipulate several points clearly, for example the information considered as confidential and its identification, the individuals and legal entities entitled to receive this information and the duration of the obligation of confidentiality, which may vary depending on the type of information. Failure to keep your invention confidential may lead to serious consequences. You will find more information concerning this subject under "Should I keep my invention confidential?" in "Questions and Answers". Exploitation of patent rights     * Developing an exploitation strategy (+) Generally speaking, there are three ways of exploiting a patent: (1) retain exclusive rights to exploitation of the invention (maintain a monopoly), (2) grant licences, (3) sell (assign the patent). You will find more information concerning "How to exploit a patent" in "Questions and Answers". What is the best strategy? Your intellectual property strategy in general, and your exploitation strategy in particular, depend above all on the context of your industrial and/or commercial activities and your business strategy. In this context, you should assess your relations with the third parties likely to be interested in your invention. What are your strengths and weaknesses? What are the opportunities and the threats? If you are a player in a field of activity where you need to use technical solutions developed by third parties, it will be difficult to retain a monopoly. If you refuse to allow a third party to exploit your invention, it could retaliate by denying you the right to use its patented technology. You are in a situation of interdependence. In this case, it is best to opt for the licence. You should also define a budget for exploitation. If you want to retain exclusive rights over the exploitation of your invention, you may even have to defend your rights before the courts. This costs money. If you want to grant licences, you may also need to initiate legal proceedings, if only to exert a certain degree of pressure on uncooperative licensees. Moreover, licence negotiations generally involve travelling and obtaining advice from IP specialists. A suitable budget should be allocated. Nevertheless, a well-managed exploitation strategy may generate a considerable return on investment. What is best if you have limited ressources? You can, for example, assign your patent to someone who has the means and determination to exploit the patent. You can agree on a price with a variable part, in order to take advantage from the benefits of the exploitation. Another solution consists in finding a financially solid and motivated associate. You remain owner and your associate, who finances the exploitation, takes a contractually-agreed share in the profits.     * Drafting "formal notice" letters (+) It is in your own interest to settle a dispute out of court. Litigation is relatively expensive and also relatively long. A first step towards an out of court solution consists in sending a letter of formal notice to a presumed infringer. The content and terms of this letter are important. Firstly, you should be factual, avoid presumptions and speculative allegations. The letter may be used against you, especially in the event of legal proceedings if they prove avoidable. Secondly, the letter should be in line with the exploitation strategy that you defined (see above). The letter should direct the presumed infringer towards the result you want. It is therefore not simply a matter of writing a letter, but also involves serious preparation. This preparation will allow you to obtain more accurate details of the facts and their use and, if necessary, to identify the most appropriate legal entity to which the letter should be sent.     * Support with licence or assignment negotiation (+) Good preparation is a prerequisite for successful negotiation. You should clearly define what you want and carefully assess your relations with the third party concerned, in terms of strengths and weaknesses and in terms of opportunities and threats. See also "Developing an exploitation strategy" above. The third party may have unsuspected weapons that can be used against you. For example, your potential licensee may have recently filed a patent application, which may concern your activities, but about which you are unaware since it has not yet been published. Consequently, during the negotiation you may be faced with a surprise or an unexpected question. In addition, false arguments may be put forward, sometimes disguised in technical and legal jargon. Negotiation often requires a certain degree of creativity, which must nevertheless comply with applicable laws and be in line with your strategy. Make sure that all the important points are discussed during the negotiation and that they are recorded in writing in a contract. Written documents are often exchanged during negotiation. They may have a precontractual nature and involve commitments. They can be used to demonstrate a fault for unfair breach of contract. These points clearly indicate how important it is to take advice from specialists skilled in both technical and legal matters.     * Drafting a licence or assignment contract (+) It is much easier to draft a licence or assignment contract if the negotiation is well prepared, well structured and well managed. See above. It is essential that every point is discussed and that the parties agree on each one. Otherwise, all the remaining points should be clarified before signing the contract. A well-written contract should foresee all major possibilities that may arise during the course of the contract. The contract should provide clear answers, which satisfy the parties and comply with applicable laws. A contract adapted from a standard contract rarely meets these criteria. The same applies for a contract consisting of a mixture of standard expressions or clauses that, finally, forms a meaningless document. Drafting a good contract involves accurate assessment of the context, experience and imagination with respect to the questions that may arise, as well as common sense and clarity regarding the answers to these questions.     * French "saisie-contrefaçon" proceeding (+) Before initiating legal proceeding for infringement, you should collect serious proofs of the infringement and, if possible, its extent. Proof can be found on private premises whose access is prohibited to third parties, for example a factory in which a process protected by the patent is implemented in secret. In this case, at least on French territory, you can apply "saisie-contrefaçon" proceedings. Saisie-contrefaçon requires an order from a presiding judge of a territorially competent court of first instance. A bailiff can then go to the private premises where the proof could be found. The bailiff can be accompanied by a patent attorney. Since the patent attorney has both legal and technical expertise, his presence is often highly valuable. The bailiff and the patent attorney must strictly comply with the writ of execution, under pain of the saisie-contrefaçon being declared void. The patent attorney is generally more familiar with saisie-contrefaçon proceedings than the bailiff, who would only have to deal with this type of matter under exceptional circumstances.     * Patent infringement lawsuits (+) It is in your own interest to settle a dispute out of court. As already mentioned under "Drafting formal notice letters", litigation is relatively expensive and also relatively long. However, you may need to go to law, for example if the opposing party behaves unreasonably and there is little hope of reaching an out of court settlement. You may also go to law to exert pressure on the opposing party, for example when it applies a tactic designed to delay negotiations. If you intend to go through with the lawsuit, remember that judges may not necessarily see your point of view. As a general rule, judges are not trained engineers. You will need to seek help from an intellectual property specialist who has solid technical expertise and who can explain the technical aspects clearly and logically. A good argumentation, especially regarding the technical aspects, well founded on intellectual property provisions and case-law, is decisive. In addition, a good argument during a patent infringement lawsuit may persuade the opposing party to accept an out of court settlement on your terms. Management of patent rights     * Patent portfolio evaluation/review (+) Reviewing a patent portfolio is useful for several reasons. Firstly, the review will identify and strengthen the exploitation opportunities. Secondly, the review will provide a means of controlling the cost of a patent portfolio. For example, maintenance of patents for an invention that offers little financial interest may be totally or partially stopped. In the latter case, a number of countries are selected. Selecting the countries is especially important during the patent grant process: in which country should the invention be patented? An intellectual property specialist can offer true added value when reviewing a patent portfolio. He is in a position to give a relatively reliable indication of the scope of a patent or, in case of a patent application, to state whether a patent is likely to be granted and, in this case, estimate the scope of this future patent. In order to take the right decisions, these estimations are vital. The intellectual property specialist will also help you to assess the commercial interest of the invention concerned. Part of this assessment consists in correctly defining the invention as a solution to a problem. Lastly, he will assess with you the relevance of the problem and the relevance of the solution, which characterise the invention. The relevance of the problem is defined, for example, in terms of the market value of the products and services concerned. The relevance is also defined by the level of nuisance caused by the problem. The relevance of the solution is defined with respect to other possible solutions, if any. An invention that represents a good solution to a problem of limited commercial relevance has little value. The same applies for an invention that concerns a commercially relevant problem but which only represents one solution amongst many other equivalent solutions.     * Advice on "internal" assignment of rights (+) In a group of companies, a company that owns a patent may assign or licence its patent to another company from the same group. The same applies for a patent application and even an invention. For example, one company may file the patent applications for all the inventions made within the group concerned. The other companies can be licensees. Whatever the case, a contract must always be signed between the companies concerned. This type of "internal" assignment and/or licence may simplify exploitation and offer tax advantages. They require special attention, however: "internal" assignments and licences must comply with applicable laws, especially in terms of intellectual property and taxation. For example, an assigning company must validly own the right it is assigning. The assignment, or the licence, must receive justifiable financial or other compensation. The right to a patent is in fact an intangible asset, which is part of the assigning company's assets. It cannot validly assign this asset for nothing or an unreasonably low amount. For internal assignments and/or licences, advice should therefore be obtained from intellectual property specialist as well as tax specialists.     * Registrations of assignments and licences with patent registries (+) If you have purchased a patent, or a patent application, further to an assignment, you should register this assignment in the patent registry of the country concerned. Registration identifies you as the new owner with respect to third parties. This is the principle of openness: a third party must be able to rely on the registry to find the owner of a patent. Consequently, until you are registered as the new owner, you will be unable to oppose your patent to a third party. The vendor could even assign his patent a second time since, for the other buyer, the vendor is still validly owner according to the registry, which is the official record. The same principle applies for a licence: until you have registered your licence with the patent registry of a country, you are not truly the licensee in this country. If the owner of a patent for which you obtained a licence assigns his patent to another party, the new owner will validly be entitled to ignore your licence. Registering the assignment of a patent, and even of a licence, at the patent registry office is therefore similar to registering the sale of a house at the mortgage registry. This formality is extremely important. For a house, it is handled by a notary. For a patent, or a patent application, it should be handled by a rigorous specialist.     * Payment of patent maintenance annuity fees. (+) In most countries, you must pay fees regularly to maintain a patent, or even to maintain a patent application pending. In Europe, the fees are generally paid once a year at the end of the month when the patent was filed. This formality is extremely important. If you do not pay on time, there is a period of grace during which you can validly pay the fee, subject to payment of a penalty. If you fail to pay during this period of grace, however, the patent, or the application, will be irrevocably lost, apart from highly exceptional cases where you can restore your rights through a complicated procedure. Payment of these fees therefore represents an important administrative task. This task should be entrusted to a rigorous specialist, familiar with the applicable provisions. Protection against third party rights     * Identification of rights, patent watch (+) Where patents are concerned, it is better to be safe than sorry. Searching or monitoring patent publications is useful from several points of view. Firstly, it allows you to identify the companies holding patents in a field in which you are interested, or filing patent applications in this field. Who are your potential opponents in terms of patents? They are also potential competitors. Secondly, searching or watching allows you to identify patents and applications that may possibly concern you. You will therefore be in a position to take the necessary steps to avoid disputes, which could turn out to be expensive. More details are provided in the following sections. For a European patent application, you can monitor the grant procedure, since it is public. Thirdly, watching allows you to identify the various avenues taken in research and development in the field you are interested in. This information could encourage you, for example, to find other directions or better solutions. Certain aspects should nevertheless be taken into consideration. Patents are generally only published 18 months after the first filing. This means that there is an 18-month period of uncertainty: you will be unable to find details of patents applications filed recently. A competitor who has a patent portfolio in which you are interested could file in the name of different legal entities. Unless you know the names of these legal entities, you are likely to obtain only a partial view of the patent portfolio. Searching or watching should therefore be carried out intelligently.     * Evaluation of third party rights (+) Incorrect evaluation of a patent or patent application may turn out to be expensive. Supposing you overestimate a patent: you consider incorrectly that the patent covers at least one of your products or services. You could end up paying for a licence you do not really need. Conversely, supposing you underestimate a patent. You might end up being condemned to pay considerable damages. You could also be banned from selling your products and services if they should be considered as infringing. Evaluating the scope of a patent is not easy. Firstly, the claims should be interpreted in the light of the text describing the patent. The grant procedure for the patent concerned should also be taken into consideration. The grant procedures for the corresponding patents, if any, may also provide useful information. In addition, case-law plays a very important role: how have the courts interpreted patents in similar cases, if any? In addition, evaluation inevitably includes a degree of uncertainty: the scope granted to a patent may vary from one court to another. Equally, assessment of the scope of a patent by a given court may change over time. The situation is even more complex for patent applications. Is a patent likely to be granted? In this case, what will be the cope of the future patent? Only a specialist in patent law with considerable expertise and experience will be able to guarantee a fairly reliable evaluation. This could avoid unnecessary expense and problems.     * Strategy with respect to third party rights (+) In order to implement a strategy with respect to third party rights, you should first evaluate these rights. More details are provided in the following section. It is also worthwhile obtaining information about the third party concerned, especially its business approach. You should then make a list of the strengths and weaknesses of both sides. A strength which you may find useful is a portfolio of patents that you can oppose to third parties. This can be used as "bargaining chips" and, if there is a risk of conflict, as a potential retaliation option. Other means of retaliation, which can also be used as bargaining chips, should also be identified. These means do not necessarily lie within the field of intellectual property. Let us assume that you have identified a patent, or a patent application, which concerns one of your existing or possible products or services. In this case, various measures can be considered. You could, for example, modify the product or service in question so that it is no longer concerned by the patent. You could also try to find out whether the patentee is likely to negotiate a licence with you. Perhaps you own a patent, or a patent application, in which the patentee could be interested? In case of a recently granted European patent, you might consider opposing it. If you remain silent, you might expose yourself to relatively high damages in certain countries. You must be very confident in affording to take this risk.     * Opposition to a granted European patent (+) You can lodge opposition to a European patent within a nine-month period after grant. In this way, you can revoke the European patent or reduce its scope. In some respects, the opposition procedure is an attempt to clear the field at European, and therefore centralised, scale. Should you lodge opposition to a European patent that is obstructing you? To give a good answer to this question, the risks should be evaluated. One thing is certain: by lodging opposition, you are telling the patentee that its patent is obstructing you. If you do not lodge opposition, you may need to defend your rights before the national courts of several countries designated by the European patent. These parallel procedures are expensive. Litigation before a single national court is already generally more expensive than opposition. Moreover, the outcome of this type of litigation is generally more difficult to predict than that of opposition before the European Patent Office. In certain cases, litigation before one or more national courts could also be commercially more damaging. Before lodging opposition, your chances of winning the case should be seriously evaluated. As a general rule, opposition is only worthwhile in case of a prior art document relevant enough to destroy the novelty or inventive step, or if there are sound arguments to demonstrate that there has been an extension, which is unacceptable with respect to the patent application initially filed (the patentee obtained more than requested). An alternative to opposition consists in negotiating a licence, either on your initiative or on the patentee's initiative. More details are provided in the section "Exploitation of patent rights" under "Support with licence or assignment negotiation". A licence may be more expensive than opposition, however. You could also hedge your bets: lodge opposition and negotiate at the same time. Opposition may allow you to put a certain amount of pressure on the patentee. It may represent a lever for bargaining: withdraw opposition in exchange for an agreement on a suitable licence. Whatever the case, a patent specialist will help you to define a suitable opposition strategy.     * Drafting response letters (+) A third party writes to you to oppose its patent, patent application or even its patent portfolio. What should you reply? Firstly, you should accurately evaluate what is being opposed. Refer to "Evaluation of third party rights" for more information on this subject. You should also obtain more information about the third party, especially if you do not know them. This will allow you to identify its strengths and weaknesses and determine its final intention more precisely. A response letter therefore demands serious preparation. The content and terms of this letter are important. Firstly, it should be factual, without however providing too much information to the third party: stick to what is strictly necessary. Anything you write down may be used against you in court. In this respect, you should think in international terms. You may have to defend your rights before a foreign court, which does not apply the same principles as those in the courts of your own country. A poorly written response letter could be used against you. To write a suitable response letter, the support of an intellectual property specialist will be highly valuable.     * Licence negotiation (+) Successful negotiation in your defence against third party rights is similar to licence negotiation as discussed in the section "Exploitation of patent rights" under "Support with licence or assignment negotiation", except that you are now on the other side of the negotiation table. In this type of negotiation, it is best to take advice from specialists skilled in both technical and legal matters.

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