Legal skills

We support our clientele in setting up their policy on exploiting and defending their intangible assets and in that connection, we act both as advisers and in litigation.The office has a presence in every field of intellectual property, information technologies and the associated sectors. We are active across many sectors:

• IT
• e-commerce
• press
• advertising and events communication
• insurance
• banking and finance
• pharmaceutical laboratories
• industry
• defence and security
• construction/architecture

BRANDS, DESIGNS AND MODELS, DOMAIN NAMES

The office assists its clients in their strategy for the exploitation of their distinctive emblems:

• • Advice regarding distinctive emblem protection strategy
  • Research concerning antecedents, deposits, opposition management, in France and abroad
  • Audits of trade marks, domain names, designs and models and other intellectual property rights with a view to relinquishing or acquiring these assets, or any projected operation involving them
  • Licence, franchise and distribution contracts
  • Partial contribution of assets, managed lettings, or other restructuring operations.

Our office ensures the defence of its clients’ trademarks and domain names before the judicial, administrative or arbitration authorities (more particularly before the WIPO arbitration tribunal).

• Oppositions, infringement, cancellation, disqualification and claim actions, customs seizures
• Preventive actions regarding professionals, consumers and public and international authorities alike

PATENTS

The office assists its clients in their strategy for the defence and protection of their technical patrimony, with the support of industrial property counsel:

• litigation regarding infringement and nullity of patents
• judicial audits of patent portfolios and contracts concerning professional know-how
• drafting of research and development, technical cooperation and technology transfer agreements

We assist our clients in all industrial sectors, in particular IT, telecommunications and heavy industry.

LITERARY AND ARTISTIC PROPERTY

Our office acts in anticipation regarding the following:

• definition and protection strategy for our clients’ intellectual patrimony;
• the elaboration of contracts suited to acquisition or relinquishment/licencing and the definition of remuneration policies for authors or other beneficiaries.

We also offer a litigation service in this matter both in suit and in defence.

AUDIT AND EXPLOITATION OF INTELLECTUAL ASSETS

Derriennic Associates has launched what we call an “intangible assets” offer, designed to build up, for the client business, a toolkit for the evaluation, exploitation and management of its intangible assets. This toolkit will equip the client business to produce a report devoted specifically to its intangible capital, appended to its financial statements. While copyright and intellectual property do already protect some of these intangible assets, that does not mean that they are enough to protect all of them. For example, some intangible assets, such as commercial methods, contracts for the outsourcing of services proper to the business, the transfer of know-how/information/communication media, industrial procedures, classed under the umbrella of “intellectual property” and having a significant impact on a business’s economic activity, do not qualify for protection under the French Intellectual Property Code and do not necessarily benefit from the protection afforded by Trade Secrets. This intellectual property, or intangible capital, is made up in particular of :

• human capital: personal attributes, such as intelligence, know-how, creativity, working style, motivation, etc.;
• organisational capital: elements held by the business such as procedures, methods, systems, processes, databases, values, culture, etc.;
• relational capital: relations with clients, suppliers, partners, networks, regulators, etc.

This overview raises a number of questions :

• how can a business capitalise on its intellectual assets?
• what interest does it have in capitalising on them?
• how are businesses going to present those assets in their financial statements?<

Intangible capital refers to all those non-monetary assets with no physical substance that a business holds with a view to using them for the production and supply of goods and services. In concrete terms, intangible capital refers to the possession – by the organisation – of skills, experiences, technologies, particular processes and individual abilities which represent synergies for the organisation and a competitive advantage for the business, which we find not only in research and development centres but also, increasingly, in all the enterprise’s other businesses (marketing, purchasing, production, logistics, IT and legal management, etc.). This intangible capital may remain a general concept, particularly in the framework of knowledge management, but it is also tending to crystallise out into non-financial management indicators, in other words it is being specified, inventoried, normalised and explained in annual balance sheets and ultimately in businesses’ financial communications. The point is that investors are taking an interest in these data which relate to the intangible, an interest which we do not find in the basic financial statements. Intangible capital is a subject which will survive and evolve, becoming a growth lever for the business if – and only if – it is correctly understood and implemented. Accordingly, we are seeing the emergence in this field of more and more precise practices. Indeed, the “Club Informatique des Grandes Entreprises Françaises” (CIGREF), an association of businesses whose aim is to help their managers to make them more innovative and more productive, believes that the recent approaches in terms of intangible capital enable better account to be taken of a business’s information system as an asset. The concept of intangible capital is not a new one. It has always existed, but for a long time has either been seen as a side issue or been handled on an intuitive, informal basis. What has changed, matured and converged over the past ten years is how this concept is viewed. It is now a matter of trying to derive the best advantage from the assets that make up this intangible capital, in order to add value to the business and include them in its accounting standards, so as to harmonise the presentation and clarity of its financial statements.

LICENCE MANAGEMENT – SOFTWARE REVIEW

Over the course of many years, the office has developed expertise in software licence auditing. In fact, Derriennic Associates is regularly consulted in that area, by both big international groups and SMEs/SMIs. The office assists its clients in analysing contracts and assessing the risks associated with these software reviews by reference to its own experience and jurisprudence. Consequently, the office handles not merely the technical aspects (acquired rights, metrics used), but also the legal aspects.