Industrial Property Law

An action to claim ownership allows an inventor or his successor in title to take legal action against the patent owner or applicant. The action is only available if title has been claimed for an invention which has been taken away from the inventor or his successors in title, or in violation of a legal or contractual obligation (Article L. 611-8 IP Code) . It falls within the exclusive jurisdicti …

Conditions

An action to claim ownership allows an inventor or his successor in title to take legal action against the patent owner or applicant. The action is only available if title has been claimed for an invention which has been taken away from the inventor or his successors in title, or in violation of a legal or contractual obligation (Article L. 611-8 IP Code) . It falls within the exclusive jurisdiction of the judicial court of Paris .

The sole purpose of the action is to establish the rightful ownership of the patent application or patent. The interest of the victim of usurpation of title lies in the restoration of his or her name at the head of the description of the invention of which he or she is the author, irrespective of the value of the invention . As the purpose of the action is not to rule on the validity of the title, the defendant cannot circumvent it by alleging invalidity of the patent .

Since the applicant and inventor declared in the patent application benefits from a presumption of ownership, the burden of proving usurpation of title rests with the claimant . In the absence of sufficient grounds for the action and proof of fraudulent misappropriation, the presumption of ownership remains . The claimant must establish his/her status as inventor , prove that he/she conceived all the features of the invention before filing , or demonstrate that he/she possessed the invention or its constituent elements taken as a whole and in combination , or the elements which subsequently formed the essence of the patents filed . To this end, the claimant must define the invention precisely and make a comparison between his invention and the claimed inventions as filed , in order to provide proof of the identical nature of the essential elements of the invention . When two or more persons claim joint ownership of an invention, they must demonstrate that they jointly owned the invention which contained the technical elements that subsequently enabled the defendant to file the patent .

The person making the claim must also establish that the invention has been misappropriated from the actual inventor, or that the patent application has been filed in breach of a legal or contractual obligation . Withdrawal of the invention presupposes the use of unfair tactics . This is the case when an inventor appropriates a patent by ousting his co-inventors and cashing in all the profits from its exploitation since its grant, without having obtained a transfer from the co-inventors , when a company registers patents on the basis of a contract which has no connection with the disputed inventions, and without any transfer having taken place , when the director of an undertaking uses his/her status and the company's material and human resources to develop new inventions, for the benefit of a second company set up and managed by that individual, which should have benefited the first company , or when a service provider who has undertaken a study for another undertaking registers a patent which essentially reproduces the content of that study, even though he did not submit it in confidence and did not state, in the order agreement, his intention to file .

The action to claim ownership rights is not contingent on the good or bad faith of the person filing the claim  or on the claimant's pursuit of any further development of his project . Nor does it presuppose that the rightful owner has been dispossessed of the intangible property, since a mere interference with the enjoyment of the thing over which the property is exercised is sufficient. Thus, an inventor can bring a legal action against the owner of a patent, even if he owns an earlier patent relating to the same invention . In this respect, two patents can be perfectly identical, even if their claims are drafted and detailed in a different order .

CA Paris, 11 January 2022, LawLex202200010413JBJ; CA Paris, 17 October 2014, LawLex202200010424JBJ; CA Paris, 24 May 2013, LawLex202200000794JBJ; CA Paris, 19 May 2006, LawLex202200010455JBJ; CA Lyon, 16 January 1997, LawLex202200010425JBJ.

Article. L. 615-17 IP Code, D. 631-2 IP Code and D. 211-6 Code of Judicial Procedure 

TGI Paris, 26 May 2016, LawLex202200010421JBJ.

CA Colmar, 25 March 2003, LawLex202200010456JBJ.

CA Paris, 21 September 2020, LawLex202200010611JBJ; CA Paris, 21 December 2012, LawLex202200000785JBJ; CA Paris, 24 May 1994, LawLex202200010461JBJ; CA Paris, 25 January 2012, LawLex202200010457JBJ.

CA Paris, 19 February 2016, LawLex202200010452JBJ.

CA Bordeaux, 10 June 2010, LawLex202200010608JBJ.

CA Paris, 4 May 2011, LawLex202200010453JBJ.

CA Paris, 22 September 2020, LawLex202200010611JBJ.

Cass. com, 3 June 1998, LawLex202200010454JBJ.

CA Paris, 3 February 2004, LawLex202200010422JBJ.

Cass. com., 19 November 1963, LawLex202200010426JBJ.

CA Paris, 19 May 2006, LawLex202200010455JBJ, which concerned the proprietor of a French patent and an international patent application under priority, who brought a claim against another undertaking which was the proprietor of a US patent and an international patent application under priority relating to the same invention. The ruling by the Paris Court of Appeal overturned the court's judgment that the owner of the original patent was obliged to bring an action for invalidity or infringement, and could not bring an action claiming ownership as the second patent application was devoid of novelty and prior use from the outset: TGI Paris, 3 February 2004, LawLex202200010422JBJ.

CA Colmar, 11 September 2012, LawLex202200010617JBJ.

Cass. com., 19 November 1963, LawLex202200010426JBJ; CA Colmar, 25 March 2003, LawLex202200010456JBJ.

CA Paris, 22 September 2020, LawLex202200010611JB.

CA Paris, 11 January 2022, LawLex202200010413JBJ.

CA Paris, 12 June 2015, LawLex201500000766JBJ; CA Paris, 25 January 2012, LawLex202200010457JBJ.

CA Paris, 17 October 2014, LawLex202200010424JBJ.

CA Colmar, 25 March 2003, LawLex202200010456JBJ, which recalls that it is not required to prove that the claimed invention was patentable.

Industrial Property Law

295. Conditions

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295. Conditions

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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