How can you protect your innovation?
Project holders develop innovations which must ensure the development and sustainability of the planned activity. With good reason, they are often anxious to know how to secure their project by preventing a third party from copying it and thus capturing market share, while at the same time saving on research and development investment.
Here are 5 steps to take to protect your innovation.
Build up evidence
In the event of a dispute concerning the takeover of an innovative project, whether in terms of counterfeiting or unfair competition, discussions will often focus on the creation date of the innovation. Indeed, novelty is one of the key criteria in these matters.
As a result, it is important for the project initiator to build up evidence of the existence and content of his or her innovation, right from the start of the project, and to keep this evidence up to date throughout its duration. The easiest way to create this evidence is to describe the innovative project at its current stage of development in a document, and to file it in a Soleau envelope with the Institut National de la Propriété Intellectuelle (INPI). In the case of computer programs, the Agence pour la Protection des Programmes (French agency for program protection) offers a specific, fast and inexpensive online registration procedure. It is important to remember, however, that these registrations do not constitute intellectual property rights, which only exist if the conditions of the French Intellectual Property Code concerning copyright, trademark, design or patent are met.
In most cases, project sponsors will have to present their innovation to third parties, such as investors or service providers who may be involved in the project. Information shared with these third parties may be protected by “LOI n° 2018-670 du 30 juillet 2018 relative à la protection du secret des affaires” if such information is not known or easily accessible, is of commercial value and the project holder implements reasonable safeguards to protect its secrecy. If there is any doubt as to whether these conditions have been met, it is advisable to sign a confidentiality agreement before disclosing any strategic information about the project. Otherwise, the person to whom the information is communicated would be totally free to exploit it and pass it on to third parties.
Sign an assignment of intellectual property rights
If the innovation is protected by copyright, the project owner needs to ensure that he or she holds these rights, which is not automatic. In fact, the owner of copyright in a work is the creator of that work. This could, for example, be a company employee or a third-party service provider involved in the project. To avoid claims of counterfeiting when exploiting the protected innovation, the project owner must therefore identify the copyright holders and sign a copyright disposal agreement with them. To be valid, this contract must define very precisely the duration of the assignment granted, its territory, the rights assigned and the reasons why the assignment is granted.
Registering a patent
A patent is also an ideal tool for securing a monopoly on an innovative creation. To be valid, a patent must relate to an invention, i.e. a technical solution to a technical problem that is new, not obvious to a person skilled in the field, and capable of industrial application. The patent, which must describe the innovation objectively and in detail, is granted by the INPI after an examination phase. Beware, however, of the special case of computer programs, which cannot in themselves be protected by a patent, but only if they form part of a material innovation or implement a process that is itself innovative.
Registering a trademark
It is also strategic to have the innovation identified by customers, which means choosing a trademark and registering it. For this registration to be valid, it is advisable to check beforehand that the chosen trademark is available, i.e. that it has not already been registered or used by a third party, and to carry out a prior search on this point. The trademark registration procedure is carried out online with the Institut national de la propriété intellectuelle (INPI) for French trademarks, or with the European Union Intellectual Property Office (EUIPO) if the project owner wishes to protect his or her trademark throughout the European Union. Please note, however, that the trademark will only be protected for the goods and services it designates, which must be detailed precisely and completely in the application for registration.
Our attorneys are at your disposal to answer all your questions and advise you. Our meetings can be held face-to-face or by videoconference. You can make an appointment directly online at www.agn-avocats.com.
AGN AVOCATS – Intellectual property and digital law department
09 72 34 24 72