Category Archives: News

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Infringement proceedings: to divulge is to denigrate

to divulge is to denigrate
Photo by Kristina Flour on Unsplash

This case, on which the supreme court ruled on 9 January 2019, relates to legal action brought by Keter Plastic, a company specialising in plastic products that includes garden furniture which, on 6 August 2012, filed a complaint for infringement against Shaf, a company specialising in garden furniture, with regard to its European Union designs.

However, Keter Plastic’s commercial agent, Plicosa France, disclosed the existence of these infringement proceedings on 29 August 2012, resulting in several of Shaf’s clients cancelling their orders.

The tribunal and the court of appeal that heard the case brought by Shaf for payment of damages for unfair competition against Plicosa France, considered that there was no evidence to demonstrate that the information communicated by the defendant with regard to the infringement proceedings it had brought against the plaintiff lacked objectivity, was excessive, disparaging or even misleading.

The supreme court overturned the judgement by the Paris Court of Appeal of 17 January 2017 in application of Articles 1240 of the Civil Code and 10 of the European Convention on Human Rights, on the grounds that the disclosure by Plicosa France to Shaf’s clients of the legal proceedings for infringement not giving rise to a court ruling had no sufficient factual basis because it only relied on the sole complaint filed by the holder of the rights and represented a blameworthy disparagement.

This case demonstrates the need for extreme caution when using information about lawsuits, and even more so when there has been no ruling, given that the presumption of innocence must be respected.

The decision of the supreme court is all the more welcome since the initial infringement case was rejected by a ruling of 27 June 2013 confirmed by a decision on 27 January 2015.

 

Article by Gilles Escudier from LLR

Intellectual Property Working Group – in China : overview, analysis and forecasts

Intellectual property protection in China

 

 

Need some insight on major trends and recent evolution in IP protection in China?

In Beijing on 8 May 2018?

Join the Intellectual Property Working Group’s next event coordinated by Shujie Feng which will discuss the upcoming White Paper on IP Protection from SIPO.

 

Date: Tuesday, May 8th 2018 

Time: 6:30 pm – 9:00 pm

Language: English

Fee: Free for CCI France-Chine members or 150 RMB for non-members

Venue: CCI France Chine Beijing Office

            2F, Building 81, No.4 Gong Ti Bei Road, Chaoyang District

            北京市朝阳区工体北路4号81号楼2层

To learn more about this event co-organised by CCI France Chine and the Benelux Chamber of Commerce in China, and register: visit the event page at CCI France Chine.

Intellectual Property Working Group – How to create and manage a company in China?

Intellectual Property - How to create and manage a company in China

 

 

 

Our trademark attorneys, Prof. Shujie Feng and Fujuan Dai, experts in managing trademarks, designs and domain names, will participate this Tuesday, March 6th, to an event organized jointly by the Chambers of Commerce and Industry in China of France and Benelux: « Intellectual Property Working Group – How to create and manage a company in China? »

Date: Tuesday March 06th, 2018

Time: 6:30 pm – 8:00 pm

Venue: CCI France Chine Beijing Office
2F, Building 81, No.4 Gong Ti Bei Road, Chaoyang District
北京市朝阳区工体北路4号81号楼2层

Language: English

Access: Free for CCI France Chine Members
150 RMB for non-members

For more information and to register: click here.

Privileged at last…

A new Rule at the U.S. Patent Office establishes that communications with foreign patent attorneys can be privileged.

Privileged information Since its coming into force on 7 December 2017, a new Rule (§ 42.57)[i] establishes that US patent agents, as well as foreign patent “practitioners”, who are qualified in their jurisdiction, will receive the same treatment as US attorneys on all issues affecting privilege or waiver. 82 Fed. Reg. 51570-75 (Nov. 7, 2017).

This clarification was long overdue as the status of a communication between a litigant and its domestic or foreign patent agent had been a hotly debated topic in the United States (US) for the last 50 years.

This is of real importance as patent litigations on an international level frequently involve the US, including challenges regarding the validity of patents which are heard before the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).

Privileged information and the US discovery process

In the US, pre-trial steps will generally involve the dreaded “discovery” process[i].  In this process reciprocal demands will be made by the parties for production of documents, depositions of parties and potential witnesses, written interrogatories etc…. The theory underlying the US rights of discovery is that all parties will go to trial with as much knowledge as possible and that neither party should be able to keep secrets from the other (except for protection against self-incrimination). This common law pleading principle is mainly applied to civil disputes and is the object of some detailed dispositions[ii] at the Federal level.

Therefore some information may not have to be disclosed and may be kept secret. Such information is described as being “privileged”.  Legal advice provided by an attorney to her/his client can enter the category of privileged information upon very specific conditions[iii] and is generally referred to as being “client-attorney privileged”.

Litigation involving patents offers several very specific challenges when the parties come to the discovery step and have to determine if a communication is, or is not, privileged.  In particular this is due to fact of:

  • the nature of patent-related communications: they may comprise a great deal of highly sensitive technical information.
  • the legal status of the advisers: they are frequently not registered before a US court to practise law and therefore, strictly speaking, not “attorneys”.  They can be US patent agents, or in-house counsels. Even more difficult is the case of foreign patent practitioners, who can also be either independent or in-house advisers of the litigant.

The new provisions now clarify at least the issue of professional status before the USPTAB of qualified independent patent practitioners such as the French CPI (Conseil en propriété industrielle), German (Patentanwalt) and British CPA (Chartered Patent Attorneys).

It is however always worth keeping in mind that the “privilege” status is to be decided on a document-by-document basis.  The nature of the communication is as important as the person writing it in order to decide if the privilege can be asserted.  The communication must be confidential in nature and “reasonably necessary and incident to the scope of the practitioner’s authority”[iii].  Opinions relating, for example, to commercial matters are unlikely to qualify.  Likewise, results of a patent search, even if carried out by a qualified patent attorney, may not be privileged although a detailed patentabilty opinion based on said search should be.

Thus, the issue of privileged information will stay an exceptionally delicate matter for patent attorneys worldwide and should be considered most carefully before starting any litigations involving countries, like the US, which have discovery-like provisions.

[i] https://www.gpo.gov/fdsys/pkg/FR-2017-11…/2017-23048.pdf

[ii] Chapter V of Federal Rules of Civil Procedure

[iii] The standard set forth in United States v. United Shoe Machinery Corp. 1918 is often cited as “the” test for privilege:

“The privilege applies only if (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication is made (a) is a member of the bar of a court, or his subordinate and (b) in connection with the communication is acting as a lawyer; (3) the communication related to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily either (i) an opinion on law or (ii) or legal services or (ii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client.” (emphasis added).

https://supreme.justia.com/cases/federal/us/247/32/case.html

Article written by Sophie McDade from LLR Patent and Trademark Attorneys

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