Intellectual property

article written by Isabelle Chéry and Jana Darwiche

 
Intellectual property (IP) is a crucial factor in innovation and economic competitiveness. It is a fundamental concept, as it confers on its owner strong prerogatives, in particular the right to exploit his intellectual creations in the socio-economic world and to prohibit others from exploiting them without his authorisation. Intellectual property rights therefore provide a competitive advantage to the one who has the authorisation to exploit it. IP rights influence most of our personal (consumer habits, leisure activities, etc.) and professional (e.g.,, industrial production) daily lives.
 

I- What is intellectual property?

Inventions or intellectual creations can lead to the generation of various exclusive intellectual property rights. Intellectual property rights are organised into two main groups: industrial property and literary and artistic property.
 

I- 1 Industrial property

The purpose of industrial property is to protect technical or aesthetic creations or distinctive signs. Industrial property plays a key role in economic issues, particularly in the production and distribution process. Industrial property is an instrument for restricting or stimulating competition, encouraging innovation and enabling companies to distinguish their products and services from those of competitors. It is linked to several important issues for companies: making creativity and innovation efforts profitable, developing the company’s value and taking possession of the knowledge it creates through its protection.
Industrial Property rights include:

- technical creations:
- aesthetic creations: the design which is defined by the appearance of the product or part of the product:
- Distinctive signs:

I.2 Literary and artistic property

 
Literary and artistic property is subdivided into copyright, neighbouring rights (rights of producers of videograms, performers' rights, etc.), software and databases. Artistic and literary property aims to protect all works of the mind, e.g., musical compositions, sculpture, novels, short stories, poems, etc. Creators of copyrighted works enjoy some basic rights under copyright law. They have the exclusive right to use the work and may prohibit or authorise its reproduction, performance, communication to the public and translation into other languages.

II- What are the rights relating to the main intellectual property rights?

Intellectual property rights generally arise from a declaratory act formalised by a deposit. This registration is managed on a territorial basis: each country has dedicated bodies. In France, it is the National Institute of Industrial Property (Institut National de la Propriété Industrielle, INPI). The registration specifies the characteristics to be protected: distinctive signs that can be appropriated by the trademark, functional creations that can be appropriated by the patent, the design for drawings and models, etc. Only copyright is exempt from this registration principle.
 

• Copyright

Copyright is acquired without any filing formalities provided that the work is original and bears the mark of its author’s personality. A work of the mind is automatically protected as soon as it is created and includes moral rights and economic rights. Copyright is exclusive and maintained for 70 years after the author’s death. The origin of the creation is necessarily dated for certain works: books, films, etc. However, for other types of works (drawings, photos, etc.), it is preferable to have proof of the date of creation by depositing a Soleau envelope (S for Soleau).
 

• Software

To give rise to a copyright, software must meet the originality criterion. The software originality consists in a personalised effort beyond the simple implementation of an automatic and constraining logic. For software created by a company employee or by State employees, public authorities and public administrative establishments, economic rights are vested in the employer except for moral rights. The rights duration is 70 years after the author’s death if he is a natural person or 70 years after the first publication year of the software if he is a legal person.
 

• The law on databases

Databases can be protected, on the one hand, in the classical way, by copyright, which makes it possible to protect the choice and arrangement of data, and, on the other hand, by a specific right for its content. This protection makes it possible to prohibit the extraction of a substantial part of a digital database. The protection is valid for 15 years. In order to be able to prove the illicit extraction of data, it is important to insert markers (addresses with spelling mistakes, non-existent references, etc.) and to deposit the list of markers in a Soleau envelope (S comme Soleau).
 

• Patent law (P for Patent)

A patent provides a technical solution to a technical problem. Ideas are not patentable, only the means by which they are put into practice are patentable. To be patentable, an invention must meet the following three criteria: it must be new, involve an inventive step and be capable of industrial application. The duration of patent protection is generally 20 years from filing date. Patent protection is limited to the territory of the State of the patent granting authority.
 

• Trademark law

Trademark law gives its owner a temporary 10-year exploitation monopoly in the country or countries where it is registered. It must be distinctive and non-descriptive (e.g., the “stallion” trademark is distinctive for toothpaste but descriptive for a magazine on horse riding), and must consist of a sign that is not prohibited (such as a flag or an unlawful emblem (contrary to the law, morality and public order)). The trade mark must be available, i.e., it must not have already been registered by someone else, and must not contain elements that deceive the consumer. The trade mark does not have to be original or new. But it must not be:
- Descriptive (e.g., sifted, for flour)
- Usual (e.g., the name of the molecule for a medicine)
- Necessary (e.g., entrecote for a meat restaurant or a drawing of a cow silhouette for a dairy product).

This right does not allow the owner to be rewarded for a creative contribution that enriches society. The protection conferred on the trademark owner consists in obtaining an exclusive right to use the trademark to designate goods or services.
 

• Design and model law

Aesthetic creations are protected in France by copyright and can also be protected by designs and models. In the sense of industrial property, designs and models apply to the appearance of a product or part of a product, characterised by its colours, shapes, lines, etc. In contrast, the shape of a product imposed by a technical function cannot be protected by designs; these technical features can be the subject of a patent application. Designs must be exploited by their owner or sold or licensed. The applicant has a 5-year monopoly, renewable for 5-year periods up to 25 years maximum.

III- What if a creation is not protectable by industrial property rights?

 
Depending on the invention characteristics, it may be decided to prefer (secret) know-how to patenting either for strategic secrecy reasons (the patent being published within 18 months of filing), or because patenting is not feasible if the invention does not meet all the patentability criteria. Know-how is a term used to designate a body of technical knowledge, business or organisational practices that are secret and not patented. It must be secret, substantial, i.e., it must have an economic utility (not necessarily a technical utility), it must be identified, i.e., it must be sufficiently described for someone else to be able to implement it and finally it must be transferable, i.e., it must be reproducible. Know-how is often made up of product manufacturing secrets, specific processes, etc.

The only way to protect it is to keep it secret by taking measures such as: the development of secure areas within research and manufacturing sites where information is compartmentalised or the signing of confidentiality agreements for people accessing secret knowledge to prevent unauthorised people from gaining access to it.

 
Do you have questions? Do you think that the results of your research may lead to intellectual property rights or know-how?
Please feel free to contact us: drive.pi@grenoble-inp.fr or Yoann Miccoli, in charge of Intellectual Property at 04 76 57 43 09.