User Guide for those involved in intellectual property in matters of defense security

 User Guide for those involved in intellectual property in matters of defense security

 

This is a translation of the text of the User Guide issued by the French Patent Office in the matter of National Defense.

1)      Introduction

This guide was created to raise awareness of those involved in intellectual property, and especially patent applicants and their counsel, on issues of defense security. Intended to help in avoiding common pitfalls, it makes no claim to be exhaustive and does not replace the texts referred to in paragraph 2).

2)      Legal and regulatory framework

Essentially, the restrictions on freedom of disclosure or use of inventions find their legal basis in the following texts:

–       The Criminal Code

–       The Code of Intellectual Property

–       Inter-ministerial  instruction 9062/DN/CAB of 13 February 1973

–       The ministerial policy statement on the confidentiality of national defense No. 1300/SGDN/PSE/SSD of 30 November 2011.

In addition the following agreements define the terms of any extension abroad of patent applications which have been the subject of measures prohibiting disclosure and free exploitation:

–                NATO Agreement of 21 September 1960 for the mutual safeguarding of secrecy of inventions relating to defense that have been the subject of patent applications

–                Agreement between the Government of the French Republic and the Government of the Kingdom of Sweden for the mutual safeguarding of secrecy of inventions relating to defense that have been the subject of patent applications of 15 March 1984.

In addition, the Ministry of Defense has signed as part of the « Letter of Intent » LoI[1] , with its correspondents in Germany, Spain, Italy, UK and Sweden an arrangement to facilitate patent protection of classified information based on these international agreements. The provisions of this Agreement concerning applicants for patents are set out in this document.

3)      Provisions on the first filing of patent applications

On the occasion of the first filing of a patent, all of the following points should be taken into consideration:.

3.1 Patent application concerning an invention the subject matter of which may be of interest to French national defense

Note: the title « invention the subject matter of which may be of interest to French national defense » should be considered in the broadest sense that extends beyond purely military equipment in the strict sense of the term, that is to say such as defined by the laws and regulations specific thereto. In addition it looks to the future in view of the current state-of-the-art and the needs of the armies. An invention filed in connection with the execution of a contract awarded by the Ministry of Defense shall be deemed of interest to national defense.

Purely as a guide, the list under item 10) lists the main technologies of interest to national defense or the disclosure of which would be likely to prejudice its interests or those of public safety.

3.1.1 The first patent filing outside France of patent applications of interest to French national defense is subject to prior agreement on the part of the Bureau de la propriété Intellectuelle(BPI).

When such a patent filing is authorized, the Bureau de la propriété Intellectuelle can optionally set the terms governing communication of the invention and filing in the designated country.

3.1.2 Inventions that are clearly not of interest to national defense may receive their first filing outside France, at the initiative of their patentees, subject to the provisions of the first paragraph of Section 3.2

3.2 Filing made in the name of an applicant with its registered office or domicile in France

The applicant whose domicile or registered office is located in France, may not perform the first filing of a European patent application or an international application outside of France. This provision is non-derogable.

For such applicant, other modes of foreign filing may be permitted, subject to the provisions in paragraphs 3.3.1.(sic (translator’s note)

3.3 The invention incorporates the contribution of at least one inventor who is French or who is or domiciled in France

The first patent filing in France of an invention cannot be required solely because it incorporates input from a French inventor or domiciled in France. However, the fact of an inventor exercising research and development activities on behalf of a foreign business of a nature likely to harm the fundamental interests of the Nation would expose such inventor to penalties under the Criminal Code.

3.4 The applicant is French and lives in France and the invention was funded in part with funding from a country party to the LoI

Provided that demonstration thereof is reported to Bureau de la propriété Intellectuelle, inventions which are financed, at least in part by one of the six countries in the LoI can be the object of a first patent filing in that country. Nevertheless, the methods of communication of the invention and filing in this country are determined by the Bureau de la propriété Intellectuelle.

3.5 The applicant is French and lives in France and the invention was made at least in part in a State party to the LoI

Provided that demonstration thereof is reported to the Bureau de la propriété Intellectuelle, inventions which were made at least in part on the territory of one of the six countries party to the LoI can be the subject of a first patent filing in that country. Nevertheless, the methods of communication of the invention and filing in this country are determined by the Bureau de la propriété Intellectuelle.

4)      Provisions concerning the extension to France of patent applications claiming priority of earlier filings abroad or corresponding thereto

4.1   The patent application filed in the country of origin has been authorized for disclosure by the authorities of that country

Upon being filed in France, this patent application will be subject to examination but a prohibition on disclosure at the initiative of the Bureau de la propriété Intellectuelle could only cover any possible improvements not covered by the authorization issued by the disclosure authorities of the country of origin.

4.2   The patent application filed in the country of origin was classified by the authorities of that country

Upon being filed in France, this patent application will be classified at a level corresponding at least to the one selected by the original authorities. It will remain classified as long as the original authorities have not requested the lifting of confidentiality.

For the implementation of this provision, the Bureau de la propriété Intellectuelle requires the production of the following:

–  4.2.1 A certificate from the original authorities, indicating the degree of protection for the invention and showing their agreement with the patent filing in France of a patent application covering it.

–  4.2.2 The commitment of the owner not to claim any compensation merely as a result of the classification of the patent application in France.

5)      Renewal of measures prohibiting disclosure and free exploitation of patent applications

Orders extending the prohibitions on disclosure and free exploitation of patent applications are issued annually. Obviously, patent applications classified at the initiative of the Bureau de la propriété Intellectuelle are regularly reviewed by competent experts in order not to maintain unreasonably bans on disclosure and free exploitation.

Where applicable, patentees have the option of requesting the declassification or release from classification by the Bureau de la propriété Intellectuelle of patent they hold. To show the merits of their request, technical arguments must be communicated.

6) Scope of measures prohibiting disclosure and free exploitation of patent applications

Patent applications subject to prohibition of disclosure and free exploitation are subject to the following constraints:

•      An absolute prohibition on disclosing the invention.

•      An inability to work the invention, in any form (manufacture, assignment, licensing a.s.o) without the prior formal approval of the Bureau de la propriété Intellectuelle.

At the request of the patentee, after having sought expert opinion, the Bureau de la propriété Intellectuelle may authorize the working of the invention in forms to be agreed with the owner to ensure that the invention will be disclosed only to persons duly authorized, who need to be aware thereof and in an environment suitable to ensure confidentiality of the invention.

•      An impossibility to freely extend the protection of the invention abroad

Orders enforcing prohibition on disclosure and free exploitation of patent applications may include the option for the patentee to extend protection to countries specifically named.

7)      Withdrawal, abandonment or rejection of patent applications subject to prohibition of disclosure and free exploitation

Loss of rights to a classified patent application does not bring about lifting of prohibition on disclosure and free exploitation of the invention it discloses. When forfeiture of rights occurs, the invention remains classified without the need to issue an annual order.

Nevertheless, the declassification of a classified patent application always results in a decision formalized by an amending order.

8)      Conditions governing the disclosure of classified patent applications between France and abroad.

Classified information, particularly such information describing the classified invention or which is likely to enable identification of its authors must always be routed through the appropriate diplomatic channels to its final recipient:

8.1 Where the classified patent application was filed first in France, communication right up to the authorized foreign recipient is performed as follows:

•      Furnishing of the documents to the Bureau de la propriété Intellectuelle

•      Transmission of documents through diplomatic channels to the French Embassy in the recipient country

•      Transmission from the French Embassy to the recipient according to current security practices in the recipient country, after verification of the entitlement of the ultimate recipient (agent, translation department…)

Documents transiting from abroad to France under this same patent application shall use the same circuit in the opposite direction and shall pass back through French diplomatic channels.

8.2   Where the classified patent application was first filed abroad, communication to the French authorized recipient occurs as follows:

•      Transmission of documents through diplomatic channels of the country of origin to its Embassy in Paris.

•      Transmission from the Embassy to the recipient according to the security practices in force in France, after verification of the entitlement of the recipient.

The Bureau de la propriété Intellectuelle is available to verify the recipient’s authorization before any communication of documents.

The dissemination procedures detailed in paragraphs 8.1 and 8.2 do not apply to documents not incorporating any description or title of the invention, for example invoices that only state the references and date of filing of a patent. For such documents, the owner is free to choose the delivery method most appropriate.

9)      Procedures for filing classified applications extended to France or patent applications likely to be of interest to defense.

The use of patent filing methods online or by fax not specifically approved for the forwarding of classified material is prohibited for any extension to France of patent applications previously classified abroad.

Is also prohibited to file any patent application online or by fax in relation to an invention made in connection with the execution of a classified contract.

Because of the risks under criminal law, the Bureau de la propriété Intellectuelle urges applicants to avoid the use of online or fax filing of documents relating to inventions which may be of interest to defense as referred to in Article 3.1.

10)    List of technologies related to the interests of defense and security

• Military aircraft and equipment

• Unmanned land, air or naval combat machinery

• Naval, air and land weapons

• Firing Control Systems

• Aeronautical Engineering with military applications

• Military parachuting and aerial delivery

• Techniques related to takeoff, deck landing, landing and launching of military aircraft

• Gas turbines, rocket engines and marine propulsion

• Surface or underwater warships and their equipment

• Submarine vehicles, weapons and systems for submarine warfare

• Ground vehicles and subassemblies thereof intended for military applications

• Stealth and camouflage

• Shields and armor

• Facilities Engineering

• Mines and explosives

• Countermeasures for improvised explosive devices

• Security and contra-insurgency systems

• Materials for artillery, missiles and their launch means

• Weapons of categories 1 to 4 as defined in Article L.2331-1 of the French defense code

• Ammunition, and initiation devices

• Explosives and Energetic Materials

• Incendiary devices and those for generating smoke or flames

• Detection of explosives, nuclear or hazardous materials

• Engineering of nuclear materials or biologically hazardous materials

• Techniques and means for chemical, biological, radiological, and nuclear (CBRN) protection

• Survival equipment for military use

• Production of nuclear power and atomic weapons

• Techniques for isotope separation and uranium enrichment

• Nuclear Naval Propulsion

• Detection and localization of targets

• Unmanned land, air or naval observation machinery

• Systems for command, control of communications and intelligence

• Military Photographic and observation Equipment and military observation

• Encryption and decryption and techniques for maintaining secrecy

• Means of calculation intended for military applications

• Means of training and simulation for the armed forces or for security

• Communication, reporting, identification, navigation and control technologies for

Military Applications

• Antennas and associated circuits for military systems

• Radar, sonar and similar systems

• Radiological equipment for military applications or security

• Directed Energy Devices

• Electronic, optoelectronic, infrared components and devices intended for Military applications

• Electrical, electronic devices and actuators specific to military applications

• Shields and ballistic protection

• Materials and chemicals for military applications (including alloys and ceramic structures or coatings)