Industrial Property Law

In return for the license granted, the licensee undertakes to pay a fee . This may consist of a lump sum, regular fixed fees or fees proportional to operating results, or a combination of a lump sum and fees. Non-payment of fees during the term of the license cannot be justified on the grounds that it relates to a patent that should allegedly be declared invalid. Furthermore, the licensee's obligation to pay fees throughout the term of the license agreement, in the event of invalidation or non-infringement of the patent, does not infringe competition rules, since the licensee is free to terminate the contract within a reasonable period .

When the agreement stipulates that fees are to be paid in proportion to the results of exploitation, the licensee may be required to report regularly to the patentee, to provide accounting documents or to enable the latter to carry out audits. In addition, the contract may require the licensee to pay minimum fees. Penalties for non-compliance with this obligation may be contractually specified. Thus, in the event of non-fulfillment of the obligation to pay the guaranteed minimum, the patent holder may not claim the amount if the contract stipulates that non-fulfillment of this obligation entails either outright termination, or the withdrawal of exclusivity for the licensed territories .

The patent owner may not demand fees for exploitation of the patent after its expiry  , but may continue to receive fees for prior exploitation.

If the licensee exploits the patent without implementing certain claims covered by the license, the licensee may obtain restitution from the licensor of the fees unduly paid in respect of those claims .

CA Paris, 5 April 2019, LawLex202300002986JBJ, clarifying that the obligation to pay remains the consideration for the exclusivity granted by the license prior to the date of invalidation of the patent.

Case C-567/14 Genentech Inc. v Hoechst GmbH and Sanofi-Aventis Deutschland GmbH, Judgment of 7 July 2016, LawLex201600001249JBJ.

Cass. com, 1 February 1994, LawLex202200002147JBJ.

Commission decision No 72/41 of 23 December 1971 (Case IV/26917) - Henkel/ Colgate; OJEC No L. 14, January 18, 1972, 14.

CA Paris, 9 November 2018, LawLex202300002595JBJ.

333. Obligation to pay the price