Industrial Property Law

Pursuant to Article 1719, paragraph 1, 1° of the Civil Code, the licensor must deliver the patented invention or the corresponding title of ownership. The obligation to deliver implies that the licensor must refrain from any behavior likely to interfere with the agreed exploitation.

The licensor's main obligation is to authorize the exploitation of the invention, but he or she does not bear the risk of the licensee's intended use of the patent, unless otherwise stipulated. In effect, the risk of industrial development lies with the licensee . However, the agreement may stipulate that the licensor must supply know-how, technical assistance or certain products required for the industrial implementation of the invention. This is the case when the licensing agreement concerns the exploitation of processes using chemical reagents, and stipulates that the licensor undertakes to use his best efforts to ensure that the licensee obtains the quantities of reagents required for his production at reasonable prices. The unavailability of the product through no fault of the licensor does not, however, constitute a breach of his obligation to deliver, since he has only contracted a best-efforts obligation .

The licensor is not obliged to deliver improvements to the invention implemented prior to the conclusion of the agreement, which constitute autonomous patents. On the other hand, the fate of improvements implemented after the conclusion of the contract is the subject of much debate, with some legal commentators rejecting the idea of an obligation on the part of the patentee to communicate such improvements, while others argue that it is based on a duty of good faith (Article 1134, para. 3, Civil Code) and/or on the provisions of Article 1135 of the Civil Code concerning the after effects of the agreement. In any event, the agreement may provide for the licensee's right to benefit from any improvements and extensions made to the licensed patents by the patent owner .

In addition, the licensor is required to maintain the patent in force (Article 1719, para. 1, 2° Civil Code). In particular, he or she must pay the annual fees required to maintain the property rights, failing which the licensee the licensee is entitled to compensation for his or her loss. However, the burden of maintaining the patent in force may be contractually transferred to the licensee.

CA Paris, 2 June 1988, SAMEX v. INTERMAS, Decree 1988, IR, 202; PIBD 1988, 445, III, 544; CA Paris, 16 January 2009, LawLex202300002983JBJ.

CA Paris, 16 January 2009, LawLex202300002983JBJ, upheld by Cass. com, 19 January 2010, LawLex202200003050JBJ, which states that the licensor's obligation does not include participating in the development of the industrial application of the process for specific products, or supplying a reagent not covered by the licensed patent.

Cass. com, 13 December 1994, LawLex202200003689JBJ.

328. Delivery and maintenance obligation