Industrial Property Law

The proprietor of a patent or patent application may grant a third party full or partial exclusive or non-exclusive exploitation of the rights attached to the patent or patent application (Article L. 613-8, paragraph 2, IP Code). The granting of rights takes the form of a license agreement, which constitutes a variety of leasing contracts, and as such is subject to the provisions of Articles 1719  …

Subject matter

The proprietor of a patent or patent application may grant a third party full or partial exclusive or non-exclusive exploitation of the rights attached to the patent or patent application (Article L. 613-8, paragraph 2, IP Code). The granting of rights takes the form of a license agreement, which constitutes a variety of leasing contracts, and as such is subject to the provisions of Articles 1719 et seq. of the Civil Code .

The parties to the license agreement are free to define the scope of the rights granted. The license may concern the title in its entirety, or be limited to certain claims or applications of those claims, to certain modes of exploitation of the title, or to a specific territory. The duration of the license may be indefinite, either party being able to terminate the contract at any time subject to prior notice, or fixed. In any case, it may not exceed the expiry date of the patent, as such a stipulation would be contrary to the competition law rules . The license agreement may also impose a minimum exploitation requirement, a non-compete or non-warranty clause, or specific termination terms, the list of such clauses being non-exhaustive. Unless otherwise specified, the licensee acquires all the prerogatives attached to the patent, for all protected applications and throughout France.

The license may be granted on a non-exclusive or an exclusive basis (Article L. 613-8, para. 2, IP Code). A patent owner who grants a non-exclusive license retains the right to exploit the patent and to grant other licenses to third parties for the same invention. He or she may authorize the licensee to sub-license or transfer the license. On the other hand, if an exclusive license is granted, the licensor is prohibited from granting other licenses to third parties, or even from exploiting the patent directly. The licensor is also prohibited from invoking clauses in contracts with other licensees against the exclusive licensee. For example, when the exclusive licensee has a manufacturing and sales monopoly in certain countries, the patent owner must guarantee it against exports of articles to these countries by beneficiaries of licenses granted for other territories .

CA Paris, 21 October 1999, LawLex202300003970JBJ, which specifies that a license that takes effect over time constitutes a continuing contract (contrat à exécution successive); Cass. com., 29 January 2020, LawLex202300003972JBJ.

EC Commission Decision No 72/41 of 23 December 1971, Henkel v Colgate; OJEC No L. 14, 18 January 1972, 14, which states that fees due for a patent license cannot be claimed for a period longer than the duration of the patent, LawLex201200000830JBJ, JCP E, No 47, 23 November 1995, 506.

Cass. com., 8 December 1970, LawLex202200002785JBJ, which states that when an exclusive license provides for a monopoly on the manufacture and sale of a fabric, that monopoly extends to articles made from that fabric.

Industrial Property Law

325. Subject matter

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325. Subject matter

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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