Industrial Property Law

Each co-owner may exploit the invention for their own benefit, subject to equitable compensation for others who do not exploit it personally or through a license (Art. L. 613-29, a) IP Code) . In particular, a co-owner must be able to take the protective measures essential to maintain the patent in force. He or she can therefore act to restore his or her rights, without having to obtain the agreem …

Exploitating the patent

Each co-owner may exploit the invention for their own benefit, subject to equitable compensation for others who do not exploit it personally or through a license (Art. L. 613-29, a) IP Code) . In particular, a co-owner must be able to take the protective measures essential to maintain the patent in force. He or she can therefore act to restore his or her rights, without having to obtain the agreement of the other co-owners . In effect, the right to exploit a patent only benefits the co-owner of a patent whose rights are still in force, since the mere fact of being the inventor of a process which is not or is no longer protected does not entitle the co-owner to any remuneration .

If no agreement can be reached on the amount of equitable compensation due to co-owners who do not exploit the invention, this is set by the judicial court (Art. L. 613-29, a) IP Code), which makes a sovereign assessment of the distribution of each party's rights, taking into account the particular circumstances of the case . Equitable compensation may consist of a royalty corresponding to the respective share of each of the inventors, or a percentage of the sales implemented by the co-owner-operator. If it consists of a percentage of sales, the non-exploiting co-owner receives a fair share of the profits implemented by the co-owner who took the initiative and assumed the risks of exploitation, and bears the share of losses should the exploitation prove to be unprofitable . Nevertheless, this method of calculation must be disregarded on grounds of fairness when it leads to a result that is disproportionate to the economic benefit actually derived from the use of the patented process. This is the case when, because of the prevailing circumstances, the patent is of very limited economic interest, the co-owners have waived their right to continue to assume the rights associated with it, and its continued exploitation is justified solely by the need to amortize costly initial investments . When compensation is due to a co-owner who has been successful in his action to claim a share of the patent and has not exploited the invention himself, it does not factor in any fraudulent filing of the patent application by the initial owner .

CA Paris, 24 March 2010, LawLex202200010412JBJ; CA Paris, 2 June 2006, LawLex202100004688JBJ.

CA Paris, 24 June 2005, LawLex202200000798JBJ, which states that subjecting the restoration claim to the agreement of the other co-owners of the patent would deprive the claimant of a legitimate right to exploit the patent in the event of their refusal, in contradiction with the provisions of article L. 613-29, a) of the Intellectual Property Code, which presuppose that a co-owner of a patent can take the conservatory measures essential to maintain it in force.

CA Rennes, 5 March 2013, LawLex202200000790JBJ.

Cass. com, 15 November 2007, LawLex202200000974JBJ; CA Paris, 15 May 2018, LawLex202200000784JBJ; CA Paris, 24 May 2013, LawLex202200000794JBJ.

CA Paris, 12 March 2010, LawLex202200010412JBJ, upheld by Cass. com, 12 July 2011, LawLex202200001132JBJ, which notably highlights the fact that the co-owner took no initiative, nor incurred any costs to exploit the invention himself, even though there was nothing to prevent him from doing so, whereas the undertaking that exploited the patent assumed the risks of exploitation and had to face strong competition forcing it to maintain competitive sales prices while committing to high business costs.

Cass. com, 12 July 2011, LawLex202200001132JBJ.

Industrial Property Law

373. Exploitating the patent

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Les décisions de justice citées dans ce paragraphe :

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373. Exploitating the patent

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise