Industrial Property Law

1) Enforceability of a French patent license
The beneficiary of a license holds the rights conferred by the license from the date of conclusion of the agreement with the patentee, but can only enforce them against third parties from the date of entry in the national patent register held by the INPI (Article L. 613-9, para. 1, IP Code) . However, prior to registration, the license may be enforced a …

Enforceability

1) Enforceability of a French patent license

The beneficiary of a license holds the rights conferred by the license from the date of conclusion of the agreement with the patentee, but can only enforce them against third parties from the date of entry in the national patent register held by the INPI (Article L. 613-9, para. 1, IP Code) . However, prior to registration, the license may be enforced against third parties who acquired rights after the date of registration, but who were aware of the license at the time of acquisition (Article L. 613-9, al. 2, IP Code) . Since registration is a condition of enforceability against third parties, and not of validity of the license agreement, its absence cannot be invoked by the parties to the contract to avoid their obligations. The date of registration of the license also makes it possible to settle conflicts between third parties who have successively acquired incompatible rights from the proprietor of the patent.

The formalities for registering the license are set out in Articles R. 613-54 to R. 613-59 of the Intellectual Property Code. The license deed may only be entered in the register if the person named therein as proprietor of the patent application or patent appears as such (Article R. 613-55, paragraph 2, IP Code). If it concerns a patent application, this must have been made public (Article R. 613-53, para. 3, IP Code). The request for registration must be sent to the INPI and include, in particular, a copy or extract of the deed recording the change in ownership (Art. R. 613-55, al. 3, 2° IP Code). The INPI only verifies the regularity of the registration procedure, not the validity of the instrument (Art. R. 613-55 IP Code). The national patent register includes the information required to identify the applicant and the patent, acts amending the ownership or enjoyment of the rights attached thereto, and changes of name and address affecting the registration (Article R. 613-53 IP Code). All entries in the national patent register are published in the BOPI ( Article R. 613-59 IP Code). 

2) Enforceability of the European patent license designating France

Until the final grant of the patent, licenses concerning European patent applications or European patents designating France must be entered in the European Patent Register to be enforceable against third parties (Article L. 614-11 IP Code). The beneficiary of an exclusive license on a European patent not entered in the European Patent Register is not entitled to bring an infringement action , even against a third party who has knowledge of the license agreement .

Once the European patent has been definitively granted, it is subdivided into as many national parts as there are territories designated in the application. To be enforceable against third parties, the license contract must be entered in each of the national registers of the countries covered by the European patent.

In the case of a temporary combination of a French patent and a European patent which has not yet been definitively granted, the license for the French patent or French patent application must be registered twice, by derogation from Article L. 613-9 of the Intellectual Property Code. It is enforceable against third parties by entry in the national patent register only insofar as the license for the European patent or patent application has been entered in the European patent register (Article L. 614-14, para. 2, IP Code). In addition, the proprietor of patents or pending patent applications may not grant independent licenses on the joint parts of his patents, under penalty of invalidity (Article L. 614-14, para. 1, IP Code). These procedures are designed to prevent the licensing of French and European patents to different persons before the European patent becomes definitive and replaces the French patent.

Cass. com., 10 July 2007, LawLex202200002839JB.

Cass. com. 25 May 1976, LawLex202200003821JBJ, which found that the third parties had acted in bad faith when they claimed that the license had not been registered, even though they knew the undertaking benefiting from it and had relied on the content of the license to reduce the patentee's damages for infringement.

Cass. com. 3 April 2012, LawLex202200003529JBJ.

Cass. com. 7 July 2004, LawLex202200002898JBJ.

Industrial Property Law

327. Enforceability

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327. Enforceability

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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