One question often comes up during initial contacts between an inventor and an industrial property firm: “Do we need to sign a confidentiality agreement?”
In the vast majority of cases, when you disclose your invention to someone before your patent has been filed or even published, you are strongly advised to sign a confidentiality agreement. Overconfidence can lead to the loss of property titles or possible industrial property titles in the future. As a result, the inventor, or the company, may see all its R&D investments wiped out.
In the case of an inventor, or a company faced with an industrial property firm, the question of signing a confidentiality contract could therefore be legitimate on the part of the inventor or the company. Invention is a long-term project, usually involving a great deal of time, and sometimes money. Its disclosure is always an important moment in the life of the invention, so when should you sign a confidentiality agreement? YesMyPatent answers.
There is no need to sign a confidentiality agreement with your patent attorney.
Although in most cases of negotiation or discussion around an innovation, confidentiality agreements should be automatic, there are cases in which they are unnecessary.
Article L. 422-11 of the French Intellectual Property Code states that: “. in all matters and for all services (…), the Industrial Property Attorney observes professional secrecy. This secrecy extends to consultations addressed or intended for his client, to professional correspondence exchanged with his client, a colleague or a lawyer, to interview notes and, more generally, to all file documents”.
This means that an Industrial Property Attorney is bound by absolute professional secrecy in all his dealings, whether by telephone, e-mail or post.
This article of the Intellectual Property Code was introduced to allow ” industrial property attorneys, [pour] to be exempted from giving evidence, to invoke professional secrecy under the conditions laid down in Articles 109 of the Code of Criminal Procedure and 206 of the New Code of Civil Procedure. In particular, it will protect them from an obligation to disclose correspondence exchanged with a client in the context of civil proceedings instituted abroad.” (Explanatory memorandum to the February 11, 2004 bill)
There is therefore no point in signing a confidentiality agreement, or NDA, with an IP firm or attorney, who, like lawyers, are bound by professional secrecy.
Also read: CPI confidentiality at the heart of your protection
Exchanges between ICCs and French lawyers are also subject to secrecy.
Article L.422-11 of the French Intellectual Property Code protects exchanges between clients and Industrial Property Attorneys, as well as between IP Attorneys and lawyers.
Exchanges between French Industrial Property Attorneys or between Attorneys and French Industrial Property Attorneys are also subject to strict confidentiality.
Laboratoire CL Tech v. Pierre Fabre
On November 24, 2015, the Paris Court of Appeal handed down its verdict on the subject of confidentiality around correspondence exchanged between a lawyer and an Industrial Property Attorney.
Laboratoire CL Tech sued Pierre Fabre for infringement of its patent. The laboratory’s evidence was correspondence sent by Pierre Fabre’s CPI to its lawyer. Pierre Fabre countered by invoking article L.422-11 of the French Industrial Property Code.
The Paris Court of Appeal accepted Pierre Fabre’s arguments, ruling that ” to claim that since the lawyer is not bound by the secrecy rules laid down by [l’article L422-11 du CPI], it would be open to him to divulge correspondence sent to him under cover of confidentiality, is to render this secrecy, intended to protect the interests of the client concerned, devoid of its purpose “.
When exchanging information between French and foreign advisers, it is advisable to use the word “Confidential” in all important correspondence. Correspondence can therefore not be produced in court in the event of a dispute, nor can it bind the parties involved.
Disclosure of my invention
In all cases where an invention is to be disclosed, whether to a raw material supplier, an R&D office or a neighbor specializing in communications, it is essential to sign a confidentiality agreement with the appropriate industrial property notices.
A simple example of a contract found on the Internet is not enough! It will not protect the industrial property aspects of your invention. And as far as patents are concerned, disclosing an invention will prevent it from being protected by patent.
AHG, AHG Rivets and F2C2 System v. Brötje Automation GmbH
On December 12, 2012, the Paris Court of Appeal ruled in favor of AHG, AHG Rivets and F2C2 System (“AHG”), holders of a European patent and a French patent, in an infringement action against Brötje Automation GmbH (“Brötje”), bound by an operating license.
AHG reproached Brötje for having abruptly broken off their commercial agreements, and therefore decided to sue Brötje for infringement to prohibit them from exploiting their patents.
Brötje responded to this attack by asserting that the invention had been disclosed to them by AHG in prototype form before the patents were filed, and that the patents should therefore be annulled for lack of novelty.
The patentability of an invention is based on the characteristics of novelty, inventive step and industrial application.
The Court of Appeal considered that ” if Article L 611-13 of the French Intellectual Property Code provides that a disclosure of the invention shall not be taken into consideration, in particular if it results directly or indirectly from an obvious abuse towards the inventor or his predecessor in title, such as in particular the violation of an obligation of confidentiality of information transmitted on the characteristics of the invention, it is up to the patentee to prove the existence of such an obligation of confidentiality;”.
However, AHG were unable to provide “proof of verbal discussions or contacts” concerning the confidentiality of their exchanges. A confidentiality clause had indeed been signed, but for a different invention!
Consequently, the claims of the French patent were deemed invalid by the Court for lack of novelty and rejected.
Rushing and the need to finalize a commercial act quickly are often counter-productive in legal terms, and can lead to the loss of hard-won industrial property rights. This case shows just how important confidentiality and specific contracts are when it comes to industrial property for all innovative companies.
If you need to disclose all or part of your invention to a third party, be sure to contact your patent attorney, who will be able to help you with all the necessary formalities.
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