Industrial Property Law

Pursuant to Article L. 422-1 of the Intellectual Property Code, an industrial property advisor (attorney /lawyer etc.) offers, on a regular and paid basis, his services to the public in order to advise, assist or represent third parties “with a view to obtaining, maintaining, exploiting or defending industrial property rights, ancillary rights and rights concerning  all related matters”. Since the …

Duty to advise

Pursuant to Article L. 422-1 of the Intellectual Property Code, an industrial property advisor (attorney /lawyer etc.) offers, on a regular and paid basis, his services to the public in order to advise, assist or represent third parties “with a view to obtaining, maintaining, exploiting or defending industrial property rights, ancillary rights and rights concerning  all related matters”. Since the duty to advise is a best-efforts obligation, an industrial property lawyer cannot be held responsible for not obtaining a patent if the necessary means to inform the client have been implemented   or for not conducting a prior art search before drafting a patent application, in the absence of any agreement on this point with the client . 

On the other hand, the IP specialist does not meet his/her duty of advice if he/she: performs an insufficient prior art search when filing a trademark application, in the absence of a request from the client, fails to advise the client to renounce invalid trademarks ,  does not alert the client to the reduced chances of filing a patent application , gives an opinion without the slightest reservation as to the absence of risk of infringement, and consequently does not put the client in a position to evaluate the risk inherent in the implementation of a new product  whereas the attorney's mandate had been previously terminated, or does not inform the client of a decision declaring that a trademark has lapsed when he or she is the sole recipient of such decision .

CA Paris, 17 November 2017, LawLex202100003054JBJ; the legal advisor who has carried out searches, drawn his client's attention to prior art, explained how the extension procedure works, responded in a detailed manner, and provided the client with the necessary information has implemented the necessary measures.

Cass. com. 12 April 1988, LawLex202100006333JBJ.

Cass. com. 20 December 1971, LawLex202100006331JBJ.

CA Toulouse, 5 December 2012, LawLex202100003061JBJ.

Cass. com, 28 September 2016, LawLex202100003014JBJ6.

CA Paris, 2 July 2003, LawLex202100006473JBJ.

Industrial Property Law

14. Duty to advise

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

14. Duty to advise

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise