Industrial Property Law

Within the framework of his representation activity before the INPI, the IP advisor may be held liable, as an agent, for negligence and misconduct committed in the performance of his/her duties, in accordance with Articles 1991 and 1992 of the Civil Code. Article L. 422-8 of the Intellectual Property Code requires IP agents to provide proof of insurance covering their professional liability and a guarantee specifically assigned to the reimbursement of funds, effects or values received. Apart from the activity of representation before the INPI, industrial property advisors are liable to their clients not as agents, but by virtue of the contract for service (contrat d'entreprise) between them. His/her liability may be incurred on the basis of Article 1147 of the Civil Code. The liability of the IP attorney cannot be enforced without proof that a fault has been committed. Failing this, any fees received cannot be disputed, even in the event of the lapse of the client's title for non-payment of annual fees . Since the industrial property attorney, who has clearly notified his client of his renunciation of the mandate, is no longer responsible for the management of his portfolio, he cannot be blamed for failing to pay the annual fees for maintaining an application for an industrial property title . 

Harm suffered by the client as a result of mismanagement by his/her industrial property attorney, whether in the context of his/her mandate or in the context of a contract for services, includes the loss of an opportunity, in particular the opportunity to avoid the harm . Thus, a client who is not informed by his patent lawyer of the limited likelihood that a patent application will be successful loses a possibility to put an end to ongoing application procedures . Similarly, an industrial property attorney who has not complied with the time-limit for filing an extension application or who has directly caused the lapse of a title by his wrongful conduct, loses the chance to collect future royalties . Where the grant of a title is not automatic, the applicant may only claim damages corresponding to the loss of opportunity to obtain an industrial property title . 

The assessment of the damage suffered as a result of mismanagement by the industrial property advisor takes into account only those expenses that directly concern the title in question. Such expenses do not include those incurred within the framework of the applicant's commercial activity, such as advertising documents and demonstration videos intended to promote the products implementing the invention at professional trade fairs, which do not directly concern the patent, and are not taken into account in the evaluation of the loss.  On the other hand, investment costs incurred for the development of the patented invention must be taken into account, which can be adjusted in view of the amortization of the initial investment during the years of exploitation of the invention from the filing of the patents until the lapse of the patent for non-payment of the annual instalments, the restoration of the rights on certain patents protecting the invention and the absence of impact of the mistakes made by the patent attorney on other patents . 

CA Paris, 17 November 2017, LawLex202100003054JBJ.

Cass. com. of 29 November 2011, 10-28.560, LawLex202100006449JBJ.

CA Toulouse, 5 December 2012, LawLex202100003061JBJ, the loss of opportunity can justify compensating the moral harm resulting from the client's loss of confidence in his or her counsel.

CA Paris, 2 July 2003, LawLex202100006473JBJ.

Cass. com. 29 November 2011, 10-28.560, LawLex202100006449JBJ.

CA Paris, 11 May 2011, LawLex202100003052JBJ.

16. Mismanagement