Industrial Property Law

A patent license agreement must be in writing, otherwise it is invalid (Article L. 613-8, para. 5, IP Code) . This may take the form of a notarial or private deed (acte sous seing privé). Like all contracts, licenses must meet the conditions set out in article 1128 of the Civil Code, which states that the validity of a contract depends on the consent of the parties, their capacity to contract, and its lawful and certain content.

Where title is held in joint ownership, each of the joint owners may grant a non-exclusive license to a third party, subject to equitable compensation of the other joint owners who do not personally exploit the invention or who have not granted a license to exploit it. Failing amicable agreement, this indemnity is set by the judicial court. However, the other co-owners must be notified of the proposed grant, together with an offer to sell their share at a specified price. Within three months following such notification, any of the co-owners may oppose the granting of the license, provided that it purchases the share of the co-owner wishing to grant the license. Failing agreement within this time-limit, the price is set by the judicial court. The parties have a time-limit of one month from notification of the judgment or, in the event of appeal, of the appeal decision, to withdraw from the granting of the license or the purchase of the co-ownership share, notwithstanding any damages that may be due, with costs to be borne by the withdrawing party (Article L. 613-29, para. 1, c) IP Code). The grant of an exclusive license requires the agreement of all co-owners or a court judgment (Art. L. 613-29, para. 1, d) IP Code). An exclusive license granted without the consent of one of the co-owners is unenforceable against that co-owner. Moreover, if an exclusive licensee is aware of the existence of a co-owner whose agreement has not been obtained, it is considered an act of infringement if said licensee exploits the patent without ensuring that the licensor has the authority to grant him the license alone .

Cass. com., 16 December 2014, LawLex202200002900JBJ.

Cass. com. 15 March 2011, LawLex202200002774JB, which found that the beneficiary of the license had been informed in a letter prior to the conclusion of the exclusive license agreement of the existence of a co-owner and of the need to ascertain his position on the proposed license, and should have verified that the licensor had the authority to grant the license alone.

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