Patents are often the first port of call when it comes to protecting an invention. They grant the holder an exclusive right to exploit it, thereby strengthening their market position: a significant strategic asset in a competitive environment. However, this protection comes at a price: it requires the full disclosure of the invention and incurs considerable costs related to the granting procedure, filing and maintenance of the patent. Are there, however, other ways to protect my invention?
Utility certificate
The utility certificate is an alternative to a patent. Less known than a patent, it is no less effective. It stands out for its simplicity and speed. The rules applicable to the utility certificate are integrated into the Intellectual Property Code, in the section on invention patents, as it is a simplified version of the patent. It then offers an exploitation monopoly, allowing its holder to exploit, authorise the use of, and assign it.
The conditions
The conditions for obtaining a utility certificate are the same as those for a patent. Indeed, the subject matter remains the same: the protection of a technical invention. Thus, the invention must be new, involve an inventive step, and be capable of industrial application.
The certificate issuance procedure
The utility certificate is presented like a patent and therefore contains: a title, a detailed description and claims that define what is protected.
Unlike a patent, a utility certificate is not subject to a prior art search at the time of filing. This will be carried out retrospectively if an infringement action is brought. It is published 18 months after its submission, just like a patent. However, it cannot be challenged by a third party in opposition proceedings.
Pros and cons
The utility certificate then offers a quick and inexpensive procedure (due to the absence of a search report), with effective legal protection. It is suitable for simple or short-lived innovations, and can be converted into a patent if the invention warrants it. On the other hand, the protection period of 10 years is more limited than that of a patent, which is 20 years.
The secret
Protecting an invention by keeping it secret is a strategic alternative to patenting, particularly when discretion confers a lasting competitive advantage. But what are the conditions?
The terms of protection
Article L151-1 of the Commercial Code lists the three cumulative conditions for information, and by analogy, an invention, to be protected under trade secret law:
- The information must be kept secret. In other words, it must not be known to the public or be easily accessible, even to professionals in the relevant sector.
- It must have commercial value due to its secret nature. In other words, it must have economic utility, which is why it is kept confidential.
- Finally, reasonable protective measures must be put in place. This means that the holder of the information must have taken concrete precautions to preserve its confidentiality. This is often materialised through confidentiality clauses in contracts, internal confidentiality policies, or restricted and controlled access to sensitive documents.
The advantages and disadvantages of such protection
Advantages:
The main advantage of this protection is undoubtedly that secrecy does not involve publication. The invention therefore remains perfectly confidential, allowing you to maintain an edge over competitors.
Furthermore, while a patent offers protection for a maximum of 20 years, a secret can last indefinitely, as long as the information remains confidential.
Finally, protecting an invention by secrecy avoids the costs related to filing, translation, annual fees, and administrative procedures.
Disadvantages
By opting for secrecy, the inventor exposes themselves to several risks.
The inventor is not protected against independent discoveries. Indeed, secrecy does not prevent a competitor from freely exploiting the same invention if it has been developed independently. Furthermore, they will have no exclusivity against a subsequent filing unless they can prove prior personal possession.
There is also a risk of losing protection for the invention in the event of disclosure. Indeed, any leak of information can be enough to break the secrecy. Therefore, the holder must be extremely vigilant and implement strict and constant measures, which is relatively restrictive.
A trade secret does not confer an exclusive right in the legal sense. It is not a form of industrial property, but rather an indirect method of protection based on confidentiality and common law (liability, contracts). Thus, in the event of a dispute, the burden of proof will lie with the owner of the secret, who must prove theft, unlawful use, or illegal disclosure.
The Soleau envelope and the sealed envelope
These two tools have a common objective: to establish proof of paternity and the prior art of the invention. As such, they will be useful to the inventor in the event of a dispute and offer indirect protection to the invention.
The Soleau Envelope
Soleau envelope is a device recognised by the’INPI enabling the certain dating of a «creation», «invention», or «idea».
How does it work?
You must prepare a file bringing together the different elements describing your invention (texts, diagrams, drawings, photos, etc.). The file is submitted online and is accompanied by a payment of €15. Finally, you will receive a receipt mentioning the submission date and the digital fingerprints of the files, attesting to the prior art of your invention. The INPI's retention period is 5 years, renewable up to 20 years.
The Soleau envelope is a valuable tool for inventors wishing to establish proof of the creation of an invention on a given date. It is a simple, quick, inexpensive and confidential process. However, it does not replace a patent if you wish to obtain an exclusive exploitation right, as its recognition is limited to French territory and its duration is limited.
The sealed envelope
The sealed envelope is an unofficial but legally admissible means of dating a « creation », « invention », « idea ».
The operation is similar to that of the Soleau envelope. You simply insert the various elements describing your invention (texts, diagrams, drawings, photos, etc.) into the envelope. Then, you must seal the envelope without opening it, and have it stamped and dated by a trusted third party (often a bailiff or a notary) or, in some cases, by the post office via an unopened registered letter sent to yourself (a legally more fragile method).