Industrial Property Law

Industrial property advisors offer their services to the public on a regular and remunerated basis 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. In particular, the industrial property attorney provides legal advice and draws up private deeds ( Art. L …

Nature of activity

Industrial property advisors offer their services to the public on a regular and remunerated basis 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. In particular, the industrial property attorney provides legal advice and draws up private deeds ( Art. L. 422-1 IP Code). 

Only persons qualified in industrial property, the list of which is established annually by the director general of the INPI, may be entered on the list of industrial property advisors and practice the profession. Applications to be listed  must be submitted to the director general of the INPI . Acceptance is subject to conditions of good character, qualifications and professional practice , as well as to conditions regarding the exercise of the profession, and nationality, residence and insurance requirements . Registration includes a reference to the particular specialization - patents or trademarks and designs - as determined by the qualification and professional practice criteria. Several references may be combined ( Art. R. 421-4 IP Code). Any use of the title of industrial property attorney outside this framework is subject to the penalties incurred for the offense of usurpation of title provided for in Article 433-17 of the Criminal Code. 

According to the provisions of Article L. 422-4 of the Intellectual Property Code, representation before the INPI requires the appointment of an industrial property advisor, or a professional from among those listed in the same text, such as a lawyer or a specialized professional organization, for acts where the technical nature of the subject matter so requires. Industrial property advisors acting in their  capacity as agents are accountable for the execution of the mandate, in particular with regard to the handling of funds, and, in the event of divestiture, present to the client or to a new representative all documents of an official nature of which they are the trustee, as well as all documents and information necessary for the implementation or completion of the task entrusted . 

The obligation to appoint a representative is incumbent on the right holder in person. If he/she wishes to appoint a new representative, he/she must complete the necessary formalities with the INPI . Payment of the proprietor's yearly fees by the industrial property advisor, which does not require the latter to demonstrate a power of attorney, is not sufficient to qualify the party as a legal representative in the eyes of the INPI, which must be notified of the change made . 

Articles R. 422-52 et seq. of the Intellectual Property Code enumerate the professional obligations of industrial property advisors. They must exercise their profession with dignity, integrity, independence and probity, and in compliance with the laws and regulations governing their profession. While they may not solicit clients, they may advertise in accordance with the conditions stipulated in Article R. 423-2 of the Intellectual Property Code . IP advisors  must refrain from acting in the same case for clients with conflicting interests, and must refrain from accepting a new case if the secrecy of any information received from a former client is likely to be infringed. They are required to see each case through to completion, unless the client decides not to proceed. They also have an obligation to undergo continuing training . 

Although the profession of industrial property counsel may be exercised individually or as a group, as an employee of a natural or legal person exercising the profession of industrial property lawyer or advisor , Article L. 422-12 of the Intellectual Property Code sets out the various activities with which it is incompatible:

- any activity of a commercial nature, whether carried out directly or through an intermediary; an industrial property attorney may not therefore avail himself of Article L. 442-6, I, 5° (now L. 442-1, II) of the Commercial Code relating to sudden termination of established commercial relations ;

- the management functions specified in Article L. 422-12 of the Intellectual Property Code, such as the functions of partner, manager, chairman of the board of directors, member of the management board, or CEO of certain undertakings,

- the position of member of the supervisory board or director of a commercial undertaking under certain conditions of professional practice and dispensations,

- except in the case of specific legislative or regulatory provisions, any other profession, with the exception of the professions of teacher, arbitrator, mediator, conciliator or legal expert. 

The industrial property lawyer exercises an independent profession, compatible with his designation as an expert in the context of a seizure for trademark  or patent  infringement.

Cass. com. 8 March 2005, LawLex202100006329JBJ.

Cass. com. 27 March 2019, LawLex202100006330JBJ.

Cass. com, 4 December 2019, LawLex202100006297JBJ. 

CA Paris, 27 October 2017, No. 13/15762, LawLex202100003057JBJ, as approved by Cass. com, 4 December 2019, LawLex202100006297JBJ.

Intellectual property consultants may use personalized approaches and advertising if they provide truthful information about the nature of the services offered and must not engage in comparison or disparagement.

Cass. com. 3 April 2013, LawLex201300000537JBJ; Cass. com, 1 December 2021, LawLex202100006104JBJ.

Industrial Property Law

13. Nature of activity

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Les notions juridiques connexes

13. Nature of activity

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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