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 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
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
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
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
Inventors/applicants can use the search tools
available free of charge on the Internet to
identify prior documents in the field of the
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.
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.
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
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.
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.
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.
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".
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
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.
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.
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.
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.
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
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.
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
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
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.
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.
Where patents are concerned, it is better
to be safe than sorry. Searching or monitoring
patent publications is useful from several points
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
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
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
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.
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
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.
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,
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.
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
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.
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.