Intellectual property : how to put up a good shield ?

July 25, 2017 – Anne MOREAUX – Right

© AP – Fabienne Fajgenbaum, Susan Benedicta and Nathalie Dreyfus have explained how to protect the IP of companies.

With the development of the digital, the implementation of a risk management policy industrial and intellectual property (IP), based on an effective strategy and long-term, has become a necessity for businesses. Lawyers have a vital role to play in the adjustment of the shield. That is why, Master Fabienne Fajgenbaum is surrounded by Nathalie Dreyfus, board FT, and Suzan, Bénédicte, project manager in insurance, for a conference on “intellectual property in The event of the Twenty-first century”.

The experts have deciphered the different traps of the virtual world and the questions of risk and compliance issues faced by companies in the field of intellectual and industrial property.

Know how to manage its resources to protect its intangible capital and transform it into innovation the beginning of an idea, be aware of and avoid the risks related to the industrial property rights of third parties and identify internal “best practices” for the management of IP, as many of the skills essential for companies who want to improve their performance and competitiveness.

“To be able to act, it is necessary to know, and to know it should watch” Nathalie Dreyfus

Today, more than ever, lawyers in the business, must seize this crucial topic.

The objectives of the training given at the last Campus of the lawyers were multiple : to measure the impact of the issue of “Risk & Compliance” in the field of IP ; consider a strategy, including in terms of financing risk by the insurance ; anticipating threats litigation through risk mapping, and develop a guide to good practice in-house.

The risks of PI are multiplied in the virtual world

After having explained how the issue of risk management is not to be overlooked for all economic actors, and particularly in the field of intellectual property – identified by the companies among the areas of high risk, the workers have made a panorama of case law on infringements of IP. There are many cases of counterfeit goods, patent infringement and other flight data, etc. of the frequent violation in the area of IP, including via the internet.

In fact, the issues and risks PI are multiplied in the virtual world. The domain names as well as the social networks can undergo but also to be the instruments with a different nature. These attacks can target the marks (phishing, cybersquatting, identity theft), patents (infringement) and the copyright (infringement of the aesthetic aspect of a website, dissemination of copyrighted works).

“In terms of cyber-risk, the technical skill of the attackers says a lot about the human genius creative” Susan Benedict

Suzan, Bénédicte, project manager in insurance, explained the extent to which new insurance mechanisms can contribute to the financing of risks in the field of IP. Consultant in FT Airbus has made a return of experience and explained the need to acquire insurance policies specialized cyber-risk. If large groups can easily develop such tools, it is not the same for start-ups and SMES, which are however also affected.

Build a dashboard to parry attacks

“To be able to act, it is necessary to know, and to know it is necessary to monitor,” insisted Nathalie Dreyfus. The company must have a clear vision of the cyber attack potential that it may suffer. What is important is that it has a strategy adapted to its activity, according to the expert council of EPS. For the management of the portfolio of domain names for example, it advises that a single person is in charge.

“In terms of cyber-risk, the technical skill of the attackers says a lot about the human genius and creative this threat very scalable,” emphasizes Suzan, Bénédicte.

To ensure its PI, it is absolutely necessary to legally qualify the object that is to study and quantify it financially. Patents and trademarks are, therefore, inevitably quantified designated by the insurance broker. The insurer asks for the mapping of the major risks of the company with the specific identification and quantification of the risk FT.

The lawyers were likely to follow this conference on the treatment of risk in the PI. © AP

“The principle is that the purpose of insurance is not to insure risks of the business, but only the residual risks,” says the expert. The customers need to do their mapping and put in place measures to mitigate the risk (see box above). This process must be done after having assessed the risks according to three analytical axes : the degree of vulnerability of the system, the occurrence of the threat and the level of criticality of the process.

The approach is to map the process and flow PI likely to be impacted, and then build a dashboard to parry attacks. “For an object to be insurable, it is imperative that it has a random character and that we can identify a specific fact, a consequence and a cause,” Susan explains Bénédicte. In addition, the insurance is not there to repay all costs but to put the company in the state before the occurrence of the cyber attack.

Note that the insurance code prohibits the reimbursement of a ransom and therefore it is not always possible to insure against ransomware (software ransom). The businesses are perturbed as in recent months, the “rançongiciel” Wannacry and NotPetya, who break into company data by encrypting them so that they are unusable unless you pay a ransom salt in bitcoin, have made many victims.

However, companies can rejoice because, according to the panellists, ” the importance of the data theft in the immaterial world has been taken into account by the legislator “.

The shield legal of the industrial property

· Protection of deposit rights

Registration of trademarks : distinctiveness and identification function. The mark can be a figurative sign or verbal, in 2 or 3D. It can even be atypical, a color can be registered as a trade mark (the orange Hermes, the blue Small Boat) since the judgment in Libertel ECJ of 6 may 2003. It may be formed of the integral form of the product (tile Burberry) or affixed to a part of the (red sole Louboutin).

Filing of patents : which protects a technical innovation, that is to say, a product or a process that provides a new solution to a given technical problem. The patented product must be new, involve an inventive step and be susceptible of industrial application.

Submission of drawings and national models : if they are new (1st condition), and have a own character or of an individual character (2nd condition). Deposit is easy with one tool, fast and simple, including online help and a space to secure payment on the website of the national Institute of industrial property (

Filings of community designs : application directly at the Office for harmonization in the internal market (OHIM), or through the INPI, which forwards the request to the OHIM. Title unit, it automatically applies to all EU countries. It simplifies, therefore, the process of the applicants : a single application and a single payment. Initially valid for a period of five years from the date of filing and may be renewed every five years for a maximum period of 25 years.

Deposit of international designs : single application with the world intellectual property organization (WIPO). The international application may be filed in English, French or Spanish and gives rise to the payment of a single fee.

· Protection without the deposit of rights

Copyright : laid down by article L. 111-1 of the French intellectual property code, which confers on its holder a private property to determine the conditions of exploitation of his work throughout his life, and 70 years after his death to his legal right.

Unfair competition : unfair behaviour are classified by the law into four categories : the denigration, the confusion, the disorganization of the company and parasitism.

The community designs a non-registered protection for a period of three years from the date of its first availability to the public (disclosure) on the territory of the european Union.

· Risk mapping PI

– assessment following an audit
– strategy of prevention of harm to the information system
– internal coordination
– implementation of policies and standards sanctioned certifying

· Protection insurance

insurance policies of traditional
– insurance policies specific to cyber-risks.

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