Industrial Property Law

The transfer of patent rights entails the transfer of ownership from the transferor to the transferee. This transfer takes place on the date on which the assignment agreement is signed or, where necessary, on another date agreed between the parties, such as that of full payment of the price . Patent rights may be transferred independently, or in conjunction with the sale of a business. In the latter case, the transfer of the business entails the transfer of the industrial property rights specified in the deed of conveyance as forming part of the transferred business. On the other hand, the mere tolerance accorded by the inventor to a company under his/her management to exploit his patent is not transmitted to successive transferees of the company's goodwill .

The transfer of ownership to the transferee confers on the latter the right to sue for infringement, subject to registration of the transfer in the national patent register. Only the transferee may take action against acts of infringement carried out after the transfer takes effect. On the other hand, acts of infringement committed prior to that date can only be contested by the transferor, unless the contract expressly reserves that right to the transferee . In fact, ownership and exclusive enjoyment of the patent may be transferred with retroactive effect from the date of filing of the application, by a deed stipulating the transferee's right to sue for acts of infringement committed prior to the conclusion of the assignment agreement  or the transferee's right to sue, at his own expense, risk and profit, for proceedings initiated by the transferor and pending before the courts . Such clauses must be entered in the national patent register to be enforceable against third parties .

Although the transferee may bring an infringement action, even in the absence of registration of the assignment in the register, when the formalities of publication of the transfer were completed between the date of the writ of summons and the date of the judgment, and since registration has no retroactive effect, a seizure for infringement (saisie-contrefaçon) initiated on the basis of an on ex parte application order by the unregistered transferee, cannot be settled, since the applicant must have standing to bring an infringement action at the time the application is lodged .

With the exception of an assignment made in the context of a claim for ownership, the transfer of a patent does not affect rights acquired by third parties prior to the date of transfer (Article L. 613-8, para. 4, IP Code). Licenses granted by the former proprietor remain in force despite the assignment. To be enforceable against the transferee, they must have been entered in the national patent register prior to the transfer.

Cass. com,. 24 September 2013, LawLex202300002108JBJ.

Cass. com., 7 February 2006, LawLex202200001708JBJ.

Cass. com., 10 October 2000, LawLex202200003064JBJ.

Cass. com., 11 January 2000, LawLex202200002776JBJ.

Cass. com., 14 June 2005, LawLex202200003388JBJ, which specifies that the infringer cannot, in order to escape liability, take advantage of a clause stipulating a division of the compensation awarded between the patent transferor and transferee.

Cass. com., 31 October 2006, LawLex202200003392JBJ.

323. Effects of assignment