Filing a Soleau envelope with the INPI (French National Institute of Industrial Property) is often one of the very first steps taken by the creator of an original idea, as a simple and inexpensive way of establishing proof of creation. In the field of patents, filing an invention disclosure in the form of a Soleau envelope—prior to subsequently filing a potential patent application—forms part of a common strategy adopted by many applicants.
The simplicity of this procedure (especially since the creation of the fully digital e-Soleau envelope) and its low cost (fifteen euros in fees for a ten-megabyte file, with a five-year retention period) help explain its great popularity.
But what is the actual purpose of a Soleau envelope, and what rights does it confer?
First, it must be recalled that a Soleau envelope does not confer any intellectual property rights over its content, unlike a patent or a trademark, for example.
In other words, a Soleau envelope cannot be enforced against a third party who reproduces its content—whether it concerns a technical invention, an aesthetic creation, or an original idea.
On the other hand, the Soleau envelope makes it possible to establish personal prior possession in the event of a dispute, due to the certain date and ownership it attributes to its content.
In the area of patents, a Soleau envelope may serve as proof of personal prior possession in France, providing protection against the consequences of an infringement action brought on the basis of a later-filed patent, where the subject matter is described in the Soleau envelope (under Article L613-7 of the French Intellectual Property Code).
It is also worth recalling that the right of personal prior possession is not transferable as such. It is attached to its holder and can only be transferred together with the business, or the company (or part of the company) to which it belongs.
In summary, the right of personal prior possession—which may, for instance, be proven by a Soleau envelope but also by a bailiff’s report or a timestamp (such as the blockchain-based timestamping system offered by our firm)—is a defensive right, enforceable only under very specific conditions, and territorially limited.
This right, provided for by the French Intellectual Property Code, applies before the French courts, which until recently were the only competent authorities for hearing disputes based on a European patent with effect in France (and, of course, on French patents).
So what becomes of the right of personal prior possession in the context of a dispute brought before the Unified Patent Court (UPC), based on a European patent within its jurisdiction?
It must first be recalled that since June 1, 2023, a new jurisdiction—the Unified Patent Court (UPC)—has been established, with competence to hear, on a centralized basis, disputes concerning European patents across 17 EU Member States (as of the date of writing, with 8 more States still able to join). However, during a transitional period lasting at least until 2030, only European patents with unitary effect (also granted since June 1, 2023) and “classic” European patents that have not opted out of UPC jurisdiction (i.e., have not been the subject of an “opt-out” request) can be brought before the UPC.
The UPC offers European patent holders under its jurisdiction the ability to bring centralized infringement actions against third parties, for infringing acts committed in all or part of the 17 UPC Member States.
For third parties holding a right of personal prior possession—e.g., through the filing of a Soleau envelope—the question arises as to whether this right can be enforced before the UPC to avoid the consequences of alleged infringement.
The UPC Agreement provides in its Article 28 a fiction of national patent for the invention protected by the European patent, on the basis of which it must be determined whether its holder would have been entitled to a right of personal prior possession. The Agreement therefore refers back to the national law of each Member State.
Consequently, in each Member State where a right of personal prior possession exists—such as in France through the holding of a Soleau envelope—the holder enjoys such a right with respect to the European patent being asserted.
This right may be invoked, in particular, in a statement of defense against an infringement action before the UPC (as provided in Rule 24 of the UPC Rules of Procedure), or even in a protective letter in the event of a suspected imminent infringement action.
Thus, the existence of a right of personal prior possession may have the effect of “fragmenting” what is intended to be a unitary infringement judgment across the 17 Member States, if such a right allows the defendant to avoid infringement in one of those States. In practice, if infringement were upheld in at least one other Member State, it is likely that the judgment—especially in determining damages awarded against the infringer—would simply disregard the infringing “volume” carried out in the State where personal prior possession has been recognized.
What strategy should be adopted under this new system?
As we have seen above, establishing a right of personal prior possession retains its relevance under the UPC system, and remains an effective means of securing personal prior art.
However, the territorial nature of this right limits its scope when acts are committed across multiple jurisdictions, unless multiple rights have been secured (for example, by carrying out similar formalities in parallel in several States, justified by the presence of an establishment or activity in those States).
It should nonetheless be recalled that this was already the case prior to June 1, 2023, when each national court had jurisdiction—and thus competence to rule on a defense of personal prior possession in its territory, which had to be established independently in each jurisdiction.
In any event, the effectiveness of proof of personal prior possession—such as a Soleau envelope in France—depends primarily on the quality of its content. It must correctly identify its holder (a company, but also any subsidiaries—the filing by one subsidiary does not necessarily confer rights on another subsidiary of the same company) and the subject matter of the invention. On this last point, it must be remembered that vague or approximate descriptions of concepts or ideas significantly reduce the enforceability of the Soleau envelope’s content in litigation. It is therefore advisable to describe in as much detail as possible the means of implementing the invention, and to include drawings, plans, or photos where possible.
As recalled at the very beginning of this article, in the field of technical inventions, only the filing of a patent application creates rights enforceable against third parties, while also establishing “universal” prior art against subsequently filed third-party patent applications.
January 2024
Contributing author
Jan Bertram
French Patent Attorney