Entitlement action (action en revendication)

An entitlement action enables a person claiming to be the rightful owner of an industrial property right to obtain the transfer to their benefit of a title filed or obtained by a third party without entitlement. For patents, it is provided for in Article L. 611-8 of the French Intellectual Property Code where the title was applied for in respect of an invention taken from the inventor or their successors in title, or in breach of a legal or contractual obligation. Trade marks (Article L. 712-6 IPC) and designs (Article L. 511-10 IPC) have a similar mechanism, based on fraud or on breach of an obligation.

Grounds for the action

For patents, the action requires the claimant to establish that they held the right to the patent and that the applicant deprived them of that right, for instance by filing an employee invention in disregard of the statutory regime, by exploiting a confidential disclosure received during negotiations, or by filing alone an invention conceived jointly. For trade marks, the provision covers a filing made in fraud of the rights of a third party or in breach of a legal or contractual obligation, which largely overlaps with a bad faith filing. The entitlement action differs from an invalidity action in that it preserves the title and merely shifts its ownership.

Time limit for bringing the action

An entitlement action in respect of a patent is time barred five years after publication of the grant of the title. Where the proprietor acted in bad faith when the title was granted or acquired, the period runs only from the expiry of the title, which in practice leaves the action open throughout the life of the patent. For trade marks, the period is also five years from publication of the application for registration, unless the applicant acted in bad faith, in which case the action is not confined to that period. Proof of bad faith therefore becomes the central issue in late claims.

Procedural regime

The action falls within the jurisdiction of the judicial court competent in intellectual property matters and, for patents, of the Paris Judicial Court. The claimant may have the court action recorded in the national register kept by INPI so as to make it enforceable against third parties who might acquire rights in the title during the proceedings. A judgment upholding the claim transfers the title, together with its divisional applications and extensions, and it is for the new proprietor to carry out the necessary recordals. Licences granted in good faith before the action was recorded may raise enforceability issues that should be anticipated.

Key points

An entitlement action transfers a title filed without entitlement to the true owner, without invalidating it. It is confined to a five year period from publication, unless the applicant acted in bad faith. Before bringing the action, gather evidence of the conception of the invention or of the earlier rights, then have the action recorded in the register to make it enforceable against third parties. Also check whether an invalidity action might, depending on the objectives, be a simpler route.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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