Industrial Property Law

The Intellectual Property Code makes the assignment of a patent subject to certain requirements as to form and publication. 
1) Written form
The assignment must be in writing, or it will be invalidated (Article L. 613-8, paragraph 5, IP Code). The written document may be an authenticated deed or a private instrument (acte sous seing privé) . Given that, under the terms of Article 1178 of the Civil …

Formalities and publication

The Intellectual Property Code makes the assignment of a patent subject to certain requirements as to form and publication. 

The assignment must be in writing, or it will be invalidated (Article L. 613-8, paragraph 5, IP Code). The written document may be an authenticated deed or a private instrument (acte sous seing privé) . Given that, under the terms of Article 1178 of the Civil Code, a contract which does not meet the conditions required is deemed invalid, the absence of a written document implies the nullity of the deed of transfer of the patent. As the requirement for a written document can be likened to a form of protection, failure to comply with this requirement is sanctioned by relative nullity  within the meaning of Article 1179 of the Civil Code, which distinguishes between absolute nullity, which sanctions the violation of a rule protecting the general interest, and relative nullity, which concerns the safeguarding of a private interest.

To be enforceable against third parties, the assignment of a French patent must be recorded in the national patent register kept by the INPI (Article L. 613-9, para. 1, IP Code) . As registration is a precondition for enforceability against third parties, and not for the validity of the deed of assignment, the parties to the deed cannot invoke the absence of registration to avoid their commitments . However, before registration, the assignment is enforceable against third parties who have acquired rights after the date of the deed, but who were aware of it at the time of acquisition of those rights (Article L. 613-9, al. 2, IP Code).

The deed is entered in the register on the initiative of one of the parties, who must be legally established at the time of entry . The deed of assignment may only be entered in the register if the person mentioned as the proprietor of the patent application or patent prior to the assignment appears as such in the register (Article R. 613-55, para. 2, IP Code). If it relates to a patent application, this must have been published (Article R. 613-53, para. 3, IP Code). The request for registration must be sent to the INPI and include a copy or extract of the deed recording the change in ownership (Art. R. 613-55, al. 3, 2° IP Code). The control carried out by the INPI concerns only the conformity of the registration procedure, not the validity of the deed.

The national patent register includes the information required to identify the applicant and the patent, acts amending the ownership or enjoyment of the rights attached thereto, and changes of name and address (Article R. 613-53 IP Code). All entries in the national patent register are published in the official journal of patents (BOPI) (Art. R. 613-59 IP Code).

3) Enforceability of a European patent designating France

As in the case of the French patent, the enforceability against third parties of documents transmitting the rights attached to a European patent application or a European patent depends on their entry in the European Patent Register (Article L. 614-11 IP Code). Once the European patent has been definitively granted, it is subdivided into as many national titles as there are territories designated in the application. Assignment of the French title is then governed by the provisions of Article L. 613-9 of the French Intellectual Property Code. It must be entered in the national patent register to be enforceable against third parties .

In the case of a temporary combination of a French patent and a European patent which has not yet been definitively granted, the assignment of the French patent or French patent application requires a dual entry, in derogation of Article L. 613-9 of the Intellectual Property Code. It is enforceable against third parties by entry in the national patent register only insofar as the assignment of the European patent or patent application has been entered in the European patent register (Article L. 614-14, para. 2, IP Code). Until it is entered in the European Patent Register, the patent application or European patent suspends the effect of the entry of the assignment of the French patent in the national patent register . Furthermore, the proprietor may not independently transfer the joint parts of his or her patents, on penalty of invalidity (Article L. 614-14, para. 1, IP Code). Nor may he independently transfer the right of priority for the filing of a European patent application (Article L. 614-14, para. 3, IP Code). These procedures are designed to prevent the transfer of French and European titles to different persons before the European patent becomes definitive and replaces the French patent.

When a French patent covers an invention for which a European patent has been granted to the same inventor or his successor in title, with the same filing or priority date, and the European patent has been the subject of a waiver of the exclusive jurisdiction of the Unified Patent Court (UPC), the French patent ceases to have effect to the extent of the European patent which is substituted for it (Article L. 614-13 IP Code).

See notably CA Reims, 30 April 2007, No. 05/02676.

CA Paris, 27 June 2003, PIBD 775/2003, III, 567.

CA Paris, 9 September 2022, LawLex202200011320JBJ; Paris, 21 October 2009, LawLex202300002109JBJ; Cass. com, 15 September 2009, LawLex202200002834JBJ.

Cass. com. 18 December 2001, LawLex202200003408JBJ.

Cass. com. 14 March 2006, LawLex202200003390JBJ; Cass. com. 9 June 2009, LawLex202200003387JBJ, which states that the registration effected on the initiative of a company which has been absorbed by application of Article L. 236-3 of the Commercial Code, deprived of legal existence, is irregular, whereas the registration should have been effected by the representative of the absorbed company, in this case invested with the capacity of representative by virtue of the merger agreement.

Cass. com., 15 September 2009, LawLex202200002834JBJ; 15 September 2009, LawLex202200003405JBJ.

Cass. com., 31 October 2006, LawLex202200003392JBJ.

Industrial Property Law

324. Formalities and publication

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324. Formalities and publication

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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