Industrial Property Law

1) Dependency between two patents
A patent is dependent on an earlier patent held by a third party when exploitation of the invention to which it relates presupposes exploitation of the invention protected by the earlier patent, known as the principal or dominant patent. The most common dependent patent is the improvement patent. The owner of a dependent patent may not exploit the patent without t …

Dependency license

A patent is dependent on an earlier patent held by a third party when exploitation of the invention to which it relates presupposes exploitation of the invention protected by the earlier patent, known as the principal or dominant patent. The most common dependent patent is the improvement patent. The owner of a dependent patent may not exploit the patent without the authorization of the proprietor of the prior patent (Article L. 613-15, para. 1, IP Code). This authorization may take the form of a non-assertion patent right, whereby the latter renounces, free of charge or against payment, the right to assert his or her title against the proprietor of the dependent patent, without the latter making any positive undertaking to exploit . It may also take the form of a license granted to the proprietor of the dependent patent in return for remuneration or in exchange for a cross-license.

In the absence of authorization, the proprietor of the dependent patent commits an infringement if he or she reproduces the main characteristic elements of the dominant patent. This is the case even if the dependent patent makes secondary improvements or modifications to the earlier patent . In addition, when licensing a dependent patent, the proprietor must assure the licensee that the underlying invention can be exploited without infringement. Failing this, the license is null and void, this obligation being an essential condition of the license agreement .

In order to avoid the likelihood of the holder of the dependent patent being prevented from exploiting it for lack of consent from the holder of the dominant patent, the judicial court may grant a license to exploit the earlier patent to the extent necessary for the exploitation of the patent of which he is the owner, and insofar as that invention constitutes an important technical advance in relation to the earlier one, and is of considerable economic interest (Art. 613-15, para. 2, IP Code) .

Applications for dependency licenses must be submitted to the judicial court in Paris (Art. R. 613-4 IP Code) and must include proof that the applicant has been unable to obtain a license from the owner of the dominant patent, and that he or she is in a position to exploit the invention in a meaningful and effective way. The judicial court determines the duration and scope of the license, as well as the amount of the royalties to which it gives rise. Either the patent owner or the licensee may petition the court to have the terms amended (Art. L. 613-15, para. 5, and L. 613-12 IP Code).

The license is non-exclusive (Art. L. 613-15, para. 5, and L. 613-13 IP Code) and can only be transferred together with the dependent patent (Art. L. 613-15, para. 3, IP Code). The holder of a dependency license may bring an infringement action based on the dominant patent if, after a formal demand, the proprietor fails to do so (Article L. 615-2 IP Code). If the licensee does not comply with the conditions under which the license was granted, the patent proprietor and any other licensees may apply to the court to have the license revoked (Art. L. 613-15, para. 5, and L. 613-14 IP Code). An infringer who has not applied for a dependency license cannot rely on the provisions of Article L. 613-15 of the Intellectual Property Code, particularly when it comes to calculating the compensation due to the dominant patent proprietor .

If the dominant patent proprietor wishes to exploit the dependent patent and the patentee working on the improvement opposes this, the dominant patent proprietor may, on application to the judicial court, obtain a cross license for the dependent patent (Article L. 613-15, para. 4, IP Code).

2) Dependence between a patent and a subsequent plant variety right

When the proprietor of a new plant variety cannot obtain or exploit his right without infringing a prior patent, he may request the granting of a license under this patent insofar as this is necessary for the exploitation of the plant variety to be protected, and insofar as the variety constitutes, with regard to the invention claimed in this patent, an important technical advance and is of considerable economic interest (Article L. 613-15-1 IP Code). Where such a license is granted, the patent proprietor may apply to the judicial court for a cross license to use the protected variety on equitable terms (Art. L. 613-15-1, para. 2, IP Code).

As in the case of patent dependency licenses, the application must be made to the judicial court, accompanied by proof that the applicant has been unable to obtain a license from the patent owner, and that he is in a position to exploit the invention in a serious and effective manner. The judicial court determines the duration and scope of the license, as well as the amount of the fees to which it gives rise. The patent owner or licensee may petition the court to have the conditions amended (Article L. 613-12 IP Code). Dependency licenses are non-exclusive. They can only be transferred with the business, undertaking or part of the undertaking to which they are attached (Article L. 613-13 IP Code). If the holder of a dependency license fails to comply with the conditions under which it was granted, the patent owner and, where applicable, the other licensees, may apply to the court for the license to be revoked (Article L. 613-14 IP Code).

Unlike the proprietor of a dependency license between two patents, the proprietor of a dependency license to use a new plant variety is not entitled to bring an infringement action based on the dominant patent, as provided for in Article L. 615-2, paragraph 4, of the Intellectual Property Code.

Cass. com. 5 January 1983, LawLex202300003316JBJ: in this case, the proprietor of the dependent patent made a commitment, in the event of exploitation, to remunerate the intellectual contribution of the dominant patent proprietor.

Cass. com. 8 July 1970, LawLex202200003067JBJ.

Since the Law of 6 August 2004, the grant of a license no longer presupposes that the time-limit for a compulsory license for non-exploitation has lapsed, nor that the public interest has been satisfied. However, since the Law of 8 December 2004, the invention must be of considerable economic interest, not merely certain.

Cass. com. 16 January 1996, LawLex202200002453JBJ.

Industrial Property Law

341. Dependency license

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Les notions juridiques connexes

341. Dependency license

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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