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Patents - Law on Employees' Inventions - France

Employees' inventions are notably governed by the provisions of Article L. 611-7 of the French Intellectual Property Code (the "IP" Code).  These provisions apply to employees only and in the absence of contractual agreements, such as collective agreements, company agreements or employment agreements, more favourable to the employee.  The regime of ownership and entitlement to additional remuneration or fair price differs depending on the classification of the invention amongst the three categories of employees' inventions defined by the IP Code.

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-When does the law on employees' inventions apply?

The rules regarding employee inventions only apply to employees and public servants. Employees (and civil servants where the employer is a state owned and managed entity) are generally understood as individuals agreeing to contribute labour in consideration of a wage and under the subordination of an employer, within the frame of an employment agreement.

The rules regarding employee inventions do not apply to inventions created by:

  • students, either at school or university, or while a trainee in a company (for the reason that the student is not subject to an employment agreement),
  • corporate executives who are not considered as employees in France (generally the chief executive of a company),
  • consultants,
  • directors,
  • contractors who are not employees of a company but rather third party employees servicing a company.

An invention performed by a consultant, a student or a corporate executive thus belongs to the inventor, not the company, even if the invention is performed while the person in question was working for the company, or falls within the field of activity of the company, or is created as a result of knowledge or the use of technologies or specific means of the company. 

An interesting case relates to an invention created by a student working at a public research agency  who had signed an agreement specifying that any invention created by him would be owned by the public research agency. The Cour de Cassation (French civil Supreme Court) quashed the ruling of the Court of Appeal which had found that the invention should contractually be the property of the public research agency(Cass. Com., 25 April 2006). The Cour de cassation decided so on the ground that: “the ownership of an invention belongs to the inventor except for the restrictive legal exceptions existing for employees and public agents; that a trainee or a user of a civil public service are not exceptions; that company regulations have to comply with these legal provisions and may not depart from this principle. In consequence, these regulations cannot be applied to [the trainee]”.

There are no specific territorial restrictions and French labour laws (including employee-inventor provisions) are usually understood as public policy rules. In the frame of the Rome I Regulation (No 593/2008) of 17 June 2008, this leaves room for extensive application of French law.



-Who becomes owner of employees' inventions?

Depending on the category of employee inventions (invention under mission; invention beyond mission; free inventions), the ownership will go the employer or to the employee.

Looking in further detail at each of the three categories of employee inventions, as set out in Article L. 611-7 of the Intellectual Property Code (IPC):

Inventions under mission are those performed by an employee either:

  •  pursuant to an employment contract comprising an inventive mission (i.e. specifying that the employee is hired as an inventor to invent) corresponding to his effective functions ; or
  • in the framework of studies or research expressly entrusted to him/her by the employer.

In other words, in order for an invention to fall into this category, it must be created pursuant to a clause in the employee’s employment contract specifying that the employee is hired to perform inventions or a separate document setting out a particular project or study to be undertaken by the employee. The wording of the employment contract or separate project has never been interpreted narrowly by the Courts; even employment contracts which did not contain a clear inventive mission were considered as containing such clause (implied invention mission), when it was obvious that the employee was hired to invent (Tribunal de Grande Instance of Paris, 7 May 1998).

However, only inventions falling clearly within the effective function of the employee will qualify as inventions under mission. If the wording of the contract is found to be too broad, or too vague, or it describes a project or duties which do not correspond to the employee’s effective functions, any inventions created pursuant thereto may not qualify as inventions under mission (Tribunal de Grande Instance of Paris, 16 October 2001).

Inventions under mission belong to the employer.

Inventions beyond mission assignable to the employer, or business related inventions, are those performed by the employee beyond his/her mission (i.e. outside the scope of normal duties) in one of the following situations:

  • during the execution of his/her functions;
  • in the field of activity of the company;
  • by reason of knowledge or use of technologies or specific means of the company or of data acquired by the company.

These inventions belong to the employee but the employer has the right to request the assignment of the ownership of these inventions in its favour.

Free inventions are inventions which belong to neither of the previous two categories. They belong to the employee.


-Which duties do employers have in relation to employee inventions?

The employer is under no obligation to file a patent or to protect an employee's invention in any other way. If the employer, in order to safeguard its rights, files a patent application, then the employer is required by law to furnish a copy of the patent application to the employee without delay. Since Law nº2015-990 of 6 August 2015 (Loi Macron) entered into force, the employer must also inform the employee who is the author of an invention under mission i) when this invention is subject of an industrial property title and ii) when the title is granted, if so.


-Is the employee inventor entitled to additional remuneration?

Depending on the category of invention at stake, there may or may not be entitlement to additional remuneration.

Inventions under mission belong to the employer and give the right to the employee to “additional remuneration”. 

Inventions beyond mission belong to the employee but the employer has the right to request the assignment of the ownership of these inventions in its favour; if the employer requests such transfer, it must pay the employee a “fair price”. 

Free inventions belong to the employee who can of course assign or grant a licence of the invention to the company (or to a third party), but on a freely negotiated basis.  



-How is the remuneration calculated?

Neither the statutory provisions, nor the collective bargaining agreements provide a method for the calculation of the additional remuneration (inventions under mission) or the fair price (inventions beyond mission). 

In the absence of clear provisions, the general opinion was that: 

  • Article L. 611-7 IPC provides that “the conditions under which the salaried person who is the author of such an invention shall enjoy additional remuneration shall be determined by the collective agreements, company agreements and individual employment contracts.”  The additional remuneration should usually remain within the range of the employee’s salary, thus usually between 1 to 12 month salary, depending on the interest of the invention for the company and the circumstances in which it was created. Some decisions have however held that nothing in the law requires that additional remuneration be calculated in relation to the salary of the employee, rather than in relation to the value of the invention which may be out of proportion to the inventor’s salary (Cour de Cassation, 21 November 2000). 
  • the fair price should reflect the value of the invention at the date the employer exercises its right of assignment. Nevertheless, the Cour de Cassation, (9 July 2013) upheld a decision finding that the fair price owed at the time of the assignment by the employer to the employee for an invention beyond mission may be assessed based on the commercial impact of said inventions after their date of assignment.

 



-Are contractual agreements possible?

The provisions governing employee inventions are embodied in the following three types of documents : 

  • statutory provisions, namely, in the French Intellectual Property Code (IPC) or in the Labour Law Code;
  • collective bargaining agreements (i.e. agreements governing all employees working in a particular industry); and
  • company agreements (i.e. agreements between the company and its unions applicable to all employees working in the company) or individual employment contracts. 

Under French labour law, collective bargaining agreements, company agreements and individual employment contracts can depart from the statutory provisions, but only if the amended provisions are more favourable to the employee than the statutory provisions.



-Procedural Issues

Amicable classification of the invention

The declaration and classification procedures for employee inventions are governed by Articles R. 611-1 et seq. IPC which provide as follows: an employee who is the author of an invention shall immediately declare the invention to his/her employer. This declaration must contain adequate information to enable the employer to classify the invention into one of the three possible categories, and must also specify the category into which the employee believes the invention falls. If the employee’s declaration does not comply with this procedure or is incomplete, the employer must advise the employee as to the precise points which need to be supplemented.

Within a period of 2 months from the employee’s declaration, the employer shall respond to the classification of the invention as set out in the employee’s declaration, failing which the employee’s proposal is deemed to be accepted by the employer.

When the invention is classified as an invention beyond mission assignable to the employer, the latter has a 4 months period (from receipt of the employee’s declaration) to exercise its right to have ownership of the patent assigned to it, unless a longer time period is agreed by the parties. Such request must be made by registered letter to the employee.

If one of the parties, in order to safeguard its rights, files a patent application, that party is required to furnish a copy of the patent application to the other party without delay.

Dispute over ownership of a patent and / or the amount of the additional remuneration or of the fair price

Jurisdiction in respect of disagreements between an employer and an employee regarding the ownership of a patent and / or the amount of the additional remuneration or of the fair price is granted to the Tribunal de Grande Instance of Paris and the Court of Appeal of Paris, which have jurisdiction in relation to all patent matters.

Article L. 615-21 IPC states that any dispute concerning employee inventions may be submitted to a joint conciliation board (comprised of employers and employees) and called CNIS (Commission Nationale des Inventions de Salariés).” An action can thus be instituted, either with the Tribunal de Grande Instance of Paris, or with the CNIS. If the action is initiated before the Court, any party can request that the dispute be first submitted to the CNIS. In such a situation, the Court must stay the proceedings until the outcome of the procedure before the CNIS. 

In any event (i.e. whether or not the dispute has been submitted to the CNIS before being submitted to the Court), the CNIS must formulate a conciliation proposal within six months from the date the case was submitted to it. To challenge said proposal before the Court, the parties have a period of one month after the CNIS has issued its proposal. The CNIS proposal is deemed to be accepted if it is not challenged within such period, and it can be enforced by an order of the Presiding judge of the Tribunal de Grande Instance of Paris, upon a simple request from either party. 

In the case where a French patent has been filed by the employee or the employer and there is a disagreement regarding the ownership of the patent, the party which did not file the patent can introduce a procedure, before the courts, to obtain the transfer of ownership of the patent. Provided the Court finds in favour of the party that did not file the patent, the Courts can order the transfer of the ownership of the patent. 

There is no settled case law on the time limitation applicable to claims of ownership of a patent or the payment of the additional remuneration or of the fair price. Claims for payment of wages and claims for payment of commercial debts are subject to a five years limitation and have been used by some French courts as a basis to limit claims of payment of the additional remuneration or of the fair price to five years (Court of Appeal of Paris, 21 February 2014) running from the date "the employer is assigned the invention". 



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