7 Sep
2020

Innovation at the French IP office: spotlight on trademark tools and services

In this regular series, national IP offices share the innovative tools and services they have launched or are developing for the future. Today, we focus on innovation at the French Institute of Industrial Property (INPI).

For the past four years, WTR has ranked the leading 50 IP offices across the world by the non-core tools and services they offer. In that time, the French INPI has consistently ranked highly. In this year’s ranking, published earlier this year, the agency ranked in 14th place. In 2019, the office was particularly lauded for its awareness and education offerings, including publishing an exclusive feature expanding on its efforts.

Today, INPI CEO Pascal Faure writes exclusively for WTR on the various innovative tools and services it offers – and reveals some of those planned for the future.

Innovation insights from the French INPI:

Section 1: IT and digital tools

Has the office made any significant changes to its website to improve functionality and user experience in the past 12 months?

Under the 2017-2020 Performance and Objectives Agreement, we were tasked with the complete digitalisation of our procedures and the improvement of both the quality of service provided to applicants and beneficiaries, and the support provided to companies, particularly start-ups, scale-ups and innovative SMEs. These strategic areas are at the heart of our actions and are reflected in the continuous development of our online services.

The past 12 months in France have been marked by major changes in the field of industrial property: the PACTE Act – the government's Action Plan for Business Growth and Transformation – which was implemented in several stages between December 2019 and July 2020, has changed the legislation on trademarks, patents and utility certificates. The aim of this legislation is to offer French companies, and SMEs in particular, easier, more versatile and more gradual access to industrial property, by providing them with more reliable industrial property rights.

These new services prompted us to review all of our procedures. Our online services were also brought into line with the new legislation. At the same time, we made considerable efforts in terms of communication to ensure that applicants were able to familiarise themselves with these procedures. In addition to our online services, the information on our website was also revised and updated.

Lastly, we have created a chatbot dedicated to online procedures. This tool has considerably improved the online support available to applicants.

Does the registry offer online filing of trademarks?

Not only does the INPI offer online filing of trademarks, it also provides for the online filing of all formalities relating to the existence of trademarks and items relating to various procedures with the French Patent & Trademark Office (renewals, records on the Trademark Register, as well as opposition procedures and applications for revocation or declaration of invalidity). As a result, the entire trademark process can be carried out online.

As mentioned above, over the past 12 months, the INPI has implemented all of the changes required by the implementation of the EU Directive of 16 December 2015 (incorporated into the PACTE Act), in particular the possibility of filing new types of trademarks, collective and guarantee trademarks, as well as applications for revocation or declaration of invalidity.

Does the registry offer a searchable database of trademark applications/registrations on its own web platform?

Since 2009, the INPI has offered a free online database of trademarks in force in France (FR, EU and international), French trademarks not in force, and images of logos and sound or video files associated with sound, multimedia or motion marks. This database can be accessed via the INPI’s website, and is also available at 'data.inpi.fr', our data portal launched in December 2019, which provides a simple, free and fast multi-database search for companies, trademarks, designs and patents.

On top of that, French trademarks can also be searched using the EUIPO’s TMview tool and are included in the WIPO’s global trademark database.

Beyond trademark filings and search, are there other services that can be managed and completed on the registry’s web platform?

As stated above, all of our procedures have been digitised for IP rights such as trademarks, patents and designs, or for applications for geographical indications. In addition, since October 2014, the INPI has made its industrial property data (including French trademark data) available for reuse, free of charge, on an FTP server, including notices in XML format (related images or multimedia files are provided in ‘.pdf’, ‘.jpg’, ‘.tif’, ‘.mp3’, ‘.mp4’, or other formats).

Furthermore, a free online notification service exists for local authorities interested in monitoring trademark applications that include their name. It is possible to request a clearance search (including a search for visual, phonetic and conceptual similarities) on trademarks and company names before registering a name: this service is available for a fee and can be requested online via the ‘inpi.fr’ website. The search is carried out within the INPI.

Does the office have an ‘application programming interface’ (API) to allow third-party software providers to access trademark application/registration data?

The use of APIs facilitates the exchange, availability and use of reliable data. The INPI is currently working on an API that can be used to display its data relating to French trademarks. This service will soon be available at ‘data.inpi.fr’. However, at this point in time, the INPI has not developed an API allowing third-party software to register or renew trademarks.

Has the office introduced (or is it planning to launch) any online services that use artificial intelligence?

As part of the complete digitalisation of our procedures, we launched a chatbot in October 2019 to help our customers with their online procedures. It offers the advantage of being able to provide them with information in real time, while also minimising the number of duplicate and non-pertinent questions submitted to our help centre. This means our call centre is free to deal with more complex IP law-related enquiries made by our clients.

The chatbot currently covers around 30 topics (eg, general information on online procedures, fees, technical problems) and answers roughly 1,400 questions per month. It provides support and helps applicants to find the relevant procedures, with questions reviewed on a regular basis to improve the chatbot’s performance.

Section 2: Value add propositions

Does the office offer trademark dispute mediation services?

The INPI does not offer mediation services as such, but we are well aware of the importance of such an approach. That is why, in 2015, the INPI signed an agreement with the Business Relations Mediator, a government service that offers mediation services to companies on a wide range of topics. By way of this agreement, the INPI added industrial property to the topics that can be dealt with by mediation within the framework of this scheme. This is particularly relevant for trademarks, since in the event of a dispute before the INPI, such as a trademark opposition procedure, the parties concerned are informed by us that a mediation procedure is available to them if both parties agree.   

Does the office host IP legal advice information/workshops for small-to-medium businesses (SMEs)?

Through the creation of an economic action department, the INPI has chosen to support SMEs with the use of IP. SMEs accounts for 90% of the French economy, and while many of them are innovative, they are not sufficiently protected due to a lack of knowledge and understanding of the IP tools at their disposal.

The first source of information, available to all and free of charge, is provided by our help centre, which responds to over 200,000 requests per year, either by phone or by email. In addition to this service, the 14 regional delegations that make up the INPI’s national network provide a local service throughout France to support SMEs with their IP decisions. This service is based on an individual approach: 11,800 interviews were conducted by our experts in 2019, via appointments and company visits, but also by way of a more collective approach in the form of conferences and workshops. In 2019, 322 workshops were held in order to raise awareness among some 10,066 people.

This collective approach is also reflected in our policy to actively take part in trade fairs and events related to business creation, innovation and support for start-ups. These forums provide us with the opportunity to demonstrate how industrial property can be used to develop businesses, to raise awareness of IP issues, and to meet with SMEs face-to-face at our stand or by appointment at our offices at a later date. 

Does the office partner with enforcement agencies or directly help companies/law firms enforce against counterfeit goods?

The INPI works closely with the regulatory and control bodies through its involvement with the French Anti-Counterfeiting Committee (CNAC), for which it acts as general secretariat. In France, the fight against counterfeiting is coordinated and implemented by the CNAC, a public-private partnership that seeks to enhance the exchange of information and best practices, coordinate concrete actions and develop new proposals. Created in 1995, the CNAC brings together industry federations, professional associations, companies and administrations concerned by the fight against counterfeiting.

The role of the INPI in the fight against counterfeiting is preventative, as it encourages companies to protect themselves as best as possible. We suggest individual and collective actions to companies through our national and international networks. For the past five years, the issue of counterfeiting has been increasingly discussed in our interviews with companies.

Our international network is particularly active with regard to this matter: our ten international advisers, who cover approximately one hundred countries, provide support to companies in the fight against counterfeiting. Through its mission, our international network has proven to companies that being proactive is the best way to enforce their rights. In addition, our help centre handles calls and emails relating to counterfeiting issues.

Lastly, our in-company and inter-company training provided by the INPI Academy, which is aimed at large companies, SMEs, research and higher-education institutions and IP professionals, includes a “counterfeiting” module.

Section 3: Public outreach

Does the office host any trademark education/awareness events aimed at the general public?

Close to 100,000 trademark applications are filed every year in France, some of which are filed by first-time applicants who need help understanding what to do, how to do it, and why they should do it.

In addition to the training courses dedicated to trademarks offered by the INPI Academy, the INPI has therefore decided to increase awareness among the general public via a series of webinars. Every third Monday of the month, we meet with our clients and prospects to discuss, from a business perspective, a topic related to current intellectual property issues.  The webinars are divided into two parts: a 'presentation' part and a 'Q&A' part, each lasting about 20 minutes. Each webinar is hosted by a professional duo (including a business manager, a legal expert, or an engineer) who will answer any questions the participants may have.

These webinars allow us to reach a large audience, all over France, without any obligation to travel, and they are also available for replay. They generally serve as a springboard for our support: following the webinar, the speakers contact the participants that requested further information on IP issues.

Crucially, companies of all sizes tune in to these webinars. Our stats have found that 24% have a single employee, 22% have between two and 10 employees, 13% between 11 and 50 employees, 10%: between 101 and 500 employees, and 14%: between 501 and 1,000 employees. The main sectors represented are legal (20%) and consulting (8%) sectors, followed by corporate services (7%), industry (6%), IT (5%), health (5%), public administration (5%), trade (3%), and agriculture (2%).

Overall, our trademark webinars have been a big success. For instance, our ‘5 tips to protect my trademark’ webinar, which took place in July, registered more than 1,500 attendees, and obtained a rating of 4 out of 5. In the coming quarter, we plan to tackle a more complex trademark issue, ‘Trademark availability: the mistakes to avoid’.

Does the IP office use social media to spread awareness of IP?

The INPI is present on Facebook, LinkedIn, and Twitter. A specific strategy is developed for each network. On Facebook, intellectual property is simplified. We present innovative companies, for example, for which IP had a major impact and we showcase archive images (trademarks, patents, designs). Young entrepreneurs often contact us via private message to ask for advice.  On LinkedIn, we mainly use it to communicate on advances in intellectual property, such as the PACTE Act, and to promote our expertise and cooperation actions with other IP offices. As for Twitter, it’s more focused on the here and now, so we use it to communicate on all our latest news and to present our events and partnerships. 

Does the office conduct and publicly release research/studies about trademarks or brands?

The INPI publishes the Industrial Property Information Review (PIBD) in which the main trademark case law is documented, in addition to certain decisions of the French Patent and Trademark Office. It also features comments and articles written by members of our teams. This review is free of charge and is available online, subject to subscription (a new issue is uploaded every fortnight).

Does the office attend non-IP specific events in an effort to spread awareness of IP to non-legal audiences?

For more than 25 years, we have participated in the Salon des Entrepreneurs, a trade fair dedicated to business creation and entrepreneurship, which takes place every year in Paris, Marseilles, Lyon and Nantes. Since its creation, we have also been represented at Viva Technology, Europe’s largest event dedicated to technological innovation and start-ups. We have also decided to increase our involvement in sector-specific trade fairs such as Maison & Objet, a global gathering for design, creative and lifestyle professionals. We also support national Research & Development events such as the Rendez-vous Carnot and the CURIE Congress.

As a result of long-standing partnerships, the INPI also attends the CES in Las Vegas and the French Tech International Meetings with Business France. In addition to the INPI’s participation in these events and its partnerships with various players in the field of innovation, for almost 30 years, we have organised our own annual event, the INPI Trophies, which reward innovative companies that have successfully used IP in their global strategy.

In general, our presence takes the form of a stand or reception desk, workshops, the moderation of talks at conferences, and/or participation in juries. At certain events, such as Viva Tech, we also invite start-ups that we have accompanied to present their products and speak about the role that IP played in their development. In 2019, we took part in a total of 230 events, fairs and shows throughout France, which allowed us to create almost 9,000 direct professional contacts.

Does the registry collaborate with other national IP offices on the development of innovative tools/services?

The INPI values cooperation and knowledge sharing. We maintain regular contact with other national patent offices, in Europe and elsewhere, to share information about innovative tools and services and compare experiences. For example, the INPI leads a workshop focused on artificial intelligence, in which several national patent offices in Europe are involved. The first objective is to share knowledge, compare experiences and discuss ongoing initiatives within participant offices on AI and its use to develop innovative solutions. The second objective is to join efforts on AI projects of shared interest.

Finally, are there any other developments planned at the office over the next 12 months to improve the experience for users or to help raise awareness of trademarks?

Over the course of the next 12 months, the INPI plans to create a new Front Office and a new Back Office for trademark applications, renewals, records on the Trademark Register, inter partes procedures (opposition and cancellation), appeals and official copies, offering input and examination assistance to internal and external users. A single trademark repository will make it possible to obtain all trademark data in real time, as well as information on archiving, publication, distribution and document management.

 

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Tim Lince

Author | Senior reporter

[email protected]

Tim Lince