Industrial Property Law

The license agreement may be affected by a change in the situation of one of the parties. This is especially the case when a third party successfully asserts ownership of the licensed patent. The licensor loses ownership of the patent, which is retroactively transferred to the claimant, who is deemed to have been the sole owner from the outset. Any license agreements relating to the patent are ter …

Change in situation of the parties

The license agreement may be affected by a change in the situation of one of the parties. This is especially the case when a third party successfully asserts ownership of the licensed patent. The licensor loses ownership of the patent, which is retroactively transferred to the claimant, who is deemed to have been the sole owner from the outset. Any license agreements relating to the patent are terminated, and the usurper must reimburse the claimant for any sums unduly received under those agreements . However, if the title was held in good faith, the benefits are retained as long as the party in question has not been informed of the action .

Contrary to the effects of a patent ownership action, the assignment of the patent by the licensor to a third party does not call into question the validity of the licenses entered into, which are continued with the new proprietor, pursuant to Article L. 613-8, paragraph 4, of the Intellectual Property Code. A licensee whose title was duly registered and published before the patent was transferred may enforce his license against the person to whom it was transferred (Articles L. 613-9, para. 1, and L. 613-8, para. 4, IP Code). If the license is not entered in the register, the licensee may enforce it against the transferee of the patent who was aware of the license (Article L. 613-9, para. 2, IP Code). In addition, the patent owner or licensee may, with the consent of the other party, transfer the rights and obligations arising from the license agreement under the ordinary civil law conditions set out in Articles 1216 et seq. of the Civil Code.

Lastly, the mere fact that one of the parties has been declared bankrupt or is in receivership cannot be used as grounds for terminating or rescinding the license agreement, and any provision to the contrary is null and void (Article L. 622-13, para. 1, IP Code) . The license agreement thus remains in effect, unless one of the parties terminates it on another ground, or requests the judicial administrator to make a decision on its continuation, in accordance with article L. 622-13, paragraph 2, of the Intellectual Property Code .

CA Paris, 22 September 2020, LawLex202200010611JBJ.

Cass. com, 13 April 1972, LawLex202200010427JBJ, which states that the possessor is in good faith when he has title as owner by virtue of a title transferring ownership, in this case a contribution of a patent into an undertaking, of which he is unaware of the defects.

CA Paris, 24 May 1994, LawLex202200010461JBJ

Cass. com. 9 March 2010, LawLex202200001278JBJ, which states that a licensee whose agreement is still in force at the time of the initiation of the licensor's bankruptcy proceedings, who does not exercise his or her right to terminate the agreement for breach of contract and who does not put the court-appointed administrator on notice to decide whether or not to continue with the agreement, remains liable for the agreed royalties.

Industrial Property Law

338. Change in situation of the parties

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

338. Change in situation of the parties

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise