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FICPI Position on Patent Law Harmonisation

Article co-authored by Jérôme COLLIN, Partner.
Collin_search.jpg FICPI was invited to a recent B+ Sub-Group meeting on 26 September 2018 to present its position on the three main patent law harmonisation topics currently under consideration: grace period, prior user rights, and conflicting applications.
In June, 2018 FICPI passed a resolution on conflicting applications and adopted an extensive position paper on these key harmonisation topics.
This article provides a brief background to FICPI’s consideration of these topics and summarises the positions reached.
Published on: 18th March 2019

Anti-counterfeiting fight : a strengthened and more focused customs strategy

By Anne CHANTELOUP, Intellectual Property Attorney.
CHANTELOUP_SEARCH.jpg On October 1st, the Ministry of Justice and the Director of Criminal Affairs and Pardons sent a document presenting the new strategy of the Directorate General of Customs and Excise (DGCE) in the fight against counterfeiting to judicial authorities.
Published on: 6th March 2019

Trademarks and ecology: a German VerpackG law on packaging

By Anne CHANTELOUP, Intellectual Property Attorney.
CHANTELOUP_SEARCH.jpg If you launch a new packaged product in Germany, this German packaging law (known as “VerpackG”) – which came into force on January 1st – may apply to you. It ensures the transposition of the European Directive 2015/720 of April 29, 2015 into German law, amending a previous directive to reduce the consumption of lightweight plastic bags.
Published on: 26th Feb 2019

Trademarks and use: a commentary on the Big Mac case

By Evelyne ROUX, Partner, and Caroline HUGUET-BRAUN, French and European Trademark and Design Attorney.
HUGUETROUX.PNG Everyone is talking about it, but what actually happened? Has the fast food giant, McDonald’s International Property Company Ltd. (“McDonald’s”), really lost its rights to the BIG MAC trademark?
Published on: 26th Feb 2019

What impact will a BREXIT without a withdrawal agreement as of March 30, 2019, have on your supplementary protection certificates?

By Anne BOUTARIC, Partner.
BOUTARIC_SEARCH.jpg UK MPs overwhelmingly rejected the negotiated exit agreement of the EU by 432 votes against 202 on January 15, 2019.
Published on: 11th Feb 2019


What impact will a BREXIT without a withdrawal agreement as of March 30, 2019, have on your IP assets, in particular patents, trademarks & designs, domain names?

By Christian TEXIER, Frédérique FAIVRE PETIT, Sylvain THIVILLIER, Evelyne ROUX, Partners, Cécile PUECH, Senior Associate and Anne CHANTELOUP, Intellectual Property Lawyer.
CTFFPEVR.PNG UK MPs overwhelmingly rejected the negotiated exit agreement of the EU by 432 votes against 202 on Tuesday January 15, 2019.
Published on: 21th Jan 2019

PPH: all possibilities are not equal

By Cécile PUECH, Senior Associate.
C.PUECH.jpg Over time, accelerated examination programs under the PPH (Patent Prosecution Highway), have proliferated. But does this simplify the task of applicants when a first office considers certain claims to be acceptable? In addition to limitations associated with the fact that an accelerated examination under the PPH may only be requested prior to the start of the examination, it appears that the benefit of filing a PPH request varies according to the applicant’s expectations, the country concerned and sometimes even the technical field of the invention… Rather than systematically filing PPH requests, a case-by-case analysis seems to be more appropriate for optimizing the examination of patent applications.
Published on: 10th Jan 2019

Important information : patents in Indonesia

This briefing note provides an update on a particular situation relating to Indonesian patents.
Published on: 20th Nov 2018

35 USC § 101: Further clarification of patent subject-matter eligibility.

By Sara HAINES, US Patent Agent.
S.Haines.jpg Two recently issued USPTO memorandums further clarify aspects of patent subject-matter eligibility under 35 USC § 101. The Vanda memo1 specifies methods of treatment that should be considered to be patent eligible under step 2A of the Alice/Mayo test2 thereby avoiding any further analysis under step 2B, while the Berkheimer memo3 states that examiners must provide substantiated evidence when additional claim elements are considered to represent well-understood, routine, conventional activity in support of 35 USC § 101 rejections under step 2B.
Published on: 30th Oct 2018

Non-traditional trademarks, marketing is a powerful ally!

By Martine BLOCH-WEILL, Partner
v3588-Martine BLOCH WEILL.jpg While it is customary for legal teams to file trademarks to ensure the durability of marketing efforts and investments when launching and commercializing new products and services, lawyers, do not forget that marketing is also your ally! And it has not finished being proven.
Published on: 29th Oct 2018

European Patent Office : Patentability of inventions involving Artificial Intelligence

By Matthieu OBJOIS, Senior Associate.
OBJOIS_SEARCH.jpg By decision of the President of the European Patent Office (EPO) dated 25 July 2018 and pursuant to Article 10(2) EPC, the Guidelines for Examination have been amended in accordance with the policy of the EPO which provides for their revision on an annual basis. These Guidelines indicate the practices and procedures to be followed by both Applicants and Examiners, and are a useful tool for monitoring the evolution of EPO policy.
Published on: 4th Oct 2018

New step for the Directive proposal of the European Parliament and of the Council on Copyright in the digital single market.

By Christian TEXIER, Partner.
C.Texier 65x65.jpg On September 12th, 2018, the European Parliament adopted a resolution approving a proposal for a directive which must now be submitted to the Council and the Commission.
Published on: 4th Oct 2018

URDP procedure: do not relinquish action against a disputed domain name registered for several years!

By Anne CHANTELOUP, Intellectual Property Attorney
CHANTELOUP_SEARCH.jpg On June 20th, the WIPO Arbitration and Mediation Center issued a decision in a UDRP proceeding initiated by REGIMBEAU against a 21-year-old domain name. The sole dispute resolution expert recognized the infringement of prior rights - in this case of trademarks and a domain name - and ruled in favor of the transfer of the disputed domain name to the complainant.
Published on: 28th Sept 2018

Industrial designs: prior disclosure: the non-relevance of the place of disclosure. Invalidity of the "Crocs" registered community design for lack of novely.

By Anne CHANTELOUP, Intellectual Property Attorney.
CHANTELOUP_SEARCH.jpg On March 14th, the General Court of the European Union issued a momentous decision to invalidate the registered community design relating to the famous “Crocs” clogs due to its premature disclosure to the public. This is a dark period for the Crocs company, after invalidation decisions of the design in the USA and of the three-dimensional trademark in the Dominican Republic.
Published on: 28th Sept 2018

Proposal from the European parliament and council on copyright for a directive in the single digital market. Rejection or substantive debate coming?

By Christian TEXIER, Partner.
C.Texier 65x65.jpg It has been widely reported in the press in recent weeks that a proposal for a European Copyright Directive was rejected by the European Parliament on July 5th, 2018. What does this mean exactly?
Published on: 25th Sept 2018

Protection of Trade Secrets : Law No. 2018-670 of July 30th, 2018

By Christian Texier, Partner.
C.Texier 65x65.jpg Law No. 2018-670 of July 30th on the “Protection of Trade Secrets” was published in the Official Gazette, No. 0174 on July 31st 2018.
Published on: 25th Sept 2018

Brexit - Trademarks & Designs: an automatic transfer without official taxes for trademarks and designs of the European Union

By Evelyne ROUX, Partner, and Anne CHANTELOUP, Intellectual Property Lawyer.
ROUX_SEARCH_2013.jpg Good news for trademark and design right holders in the heart of summer. It doesn’t come from the EU Commission, nor from the UK Government, but from the United Kingdom Intellectual Property Office (UKIPO).
Published on: 24th Aug 2018

Disclaimers at the EPO: an update with decision G1/16

By Jérôme COLLIN, Partner
Collin_search.jpg On December 18, 2017, the Enlarged Board of Appeal published decision G1/16 on the allowability of disclaimers. This decision clarifies the requirements for allowing a so-called ‘undisclosed’ disclaimer at the European Patent Office. This article will provide a reminder of the background behind decision G/16, present the content of the decision and draw conclusions on the practice of disclaimers at the EPO.
Published on: 24th Jul 2018

GRDP: it's now!

By Franck DELAMER, French Patent Attorney
Delamer_search.jpg On May 14th, the National Assembly adopted the draft law on the protection of personal data, quickly followed by the referral to the Constitutional Council by 60 senators. This text aims to adapt the “Data Protection and Freedom of Information” law to the entry into application of the European Regulation on the protection of personal data (Regulation 2016/679, abbreviated “GRDP”). A large number of obligations, however, are not affected by this referral and therefore come into effect today.
Published on: 12th Jun 2018

Overseas Trademark Protection Strategy

From its creation, or at the latest from the start of negotiations with foreign partners, overseas Trademark protection must be considered. After Malawi (25 December 2018), it is the turn of Samoa to join the international trademark system as of 4 March 2019. Given its wide geographical coverage and simplicity, this system is becoming more and more adapted to business development strategies.
Published on: 13th Dec 2018



AIPLA Annual meeting

Participation of Isabelle THILL et Sylvain THIVILLIER.

Press room

Décideurs Magazine - 2018 Rankings

“Décideurs – Strategy, Finance, Law” Magazine has published its annual rankings, identifying the best IP law firms in France. REGIMBEAU is once again ranked in the “indispensible” category for “Trademarks & Designs”, “Patents General Classification”, “Physics, Mechanics & Construction Patents”, Chemistry, Biology and Life Sciences Patents” and “Electronics, Telecoms and New Technologies Patents”.
Published on: 21th March 2019
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