Industrial Property Law

If, however, an exclusive license is granted without the agreement of one of the co-owners, it will not be enforceable against that person. Furthermore, if the exclusive licensee is informed of the existence of co-owners, he or she must ensure that the licensor has the authority to grant the license, without being able to rely on the apparent authority theory (théorie du mandat apparent). Failing this, exploitation of the patent constitutes an act of infringement against the non-consenting co-owner. However, the licensee may obtain a warranty against dispossession from the licensor in the event that he or she is prevented from exploiting the patent, and this is due to action on the part of the licensor .

Under Article L. 613-29, c) of the Intellectual Property Code, each co-owner may grant a non-exclusive license to exploit the patent. Other co-owners who do not personally exploit the invention, or who have not granted a license, must receive fair compensation. Failing amicable agreement, this compensation is set by the judicial court.

Any co-owner wishing to grant a non-exclusive license must notify the other co-owners of his or her plans, together with an offer to surrender his or her share at a specified price. Any co-owner may object to the granting of the license within three months from the date of notification, on condition of acquiring the share of the co-owner wishing to grant the license. In the absence of agreement on the price of the transfer, it is set by the judicial court. The parties have a one-month time-limit from notification of the court judgment or, in the event of an appeal, of the appeal decision, to renounce the granting of the license or the purchase of the co-ownership share, without prejudice to any damages that may be due. Costs are borne by the renouncing party.

If a co-owner has not been notified of the proposed license and the offer to sell his share, the license agreement cannot be relied upon against him, and he has an interest in and standing to invoke the invalidity of the license grant, if applicable, for failure to provide a written document .

Cass. com. 15 March 2011, LawLex202200002774JBJ, dismissing the appellant's argument that, in the absence of the co-owner's agreement, only the exclusivity clause in the license agreement entered into without his consent is unenforceable.

CA Paris, 21 December 2012, LawLex202200000785JBJ.

374. Exclusive or non-exclusive license