Registration of transactions (enforceability against third parties)

Registration is the formality by which transactions that transfer or modify the rights attached to an industrial property title are brought to the attention of third parties. Article L. 613-9 of the French Intellectual Property Code makes the enforceability against third parties of transactions relating to patents and patent applications subject to their entry in the National Patent Register, and Article L. 714-7 IPC lays down the same rule for trade marks, which are entered in the National Trade Mark Register. Designs are subject to a comparable system. Registration is not a condition of the validity of the transaction between the parties.

Transactions subject to registration

Transactions affecting ownership of the right or the right to use it must be registered, in particular the following.

• Assignment, in whole or in part, including by way of contribution to a company, merger or universal transfer of assets
• The grant of a licence, exclusive or not, and sub-licences
• Pledges and their release
• Seizures and court decisions affecting ownership of the title

Transactions relating to a European patent are entered in the European Patent Register while proceedings are pending before the European Patent Office (EPO), including during the opposition period, and then in the national registers of the validation states. Those concerning a European patent with unitary effect are entered in the Register for unitary patent protection kept by the EPO.

Effects of registration

Until it is registered, the transaction cannot be relied on against third parties. For patents, however, the law makes an exception for a third party who acquired rights after the date of the transaction with knowledge of it, against whom the transaction remains enforceable. Registration thus settles conflicts between successive successors in title in the event of competing assignments or pledges. It also determines who the office deals with, since the office sends notifications concerning the title to the registered holder.

Registration and infringement actions

An infringer is in principle a third party within the meaning of these provisions. An assignee who has not registered its title therefore runs the risk of the defendant challenging its standing to sue, at least for acts prior to registration. The exclusive licensee, who may bring infringement proceedings if the owner, after formal notice, fails to do so, faces the same difficulty. For EU trade marks, however, the Court of Justice of the European Union (CJEU) has held that a licensee may bring proceedings even though the licence has not been registered. Prudence dictates registering before bringing any infringement action or carrying out any saisie-contrefaçon.

Key points

Registration makes assignments, licences, pledges and other transactions concerning an industrial property title enforceable against third parties. It does not condition the validity of the contract between the parties, but failure to register may deprive the assignee or licensee of the ability to rely on its rights, including against the infringer. Each transaction should be registered promptly after signature, the register checked before any acquisition and missing registrations regularised before commencing proceedings.

---

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

Dhenne Avocats handles FRAND licences, standard essential patents and contracts bearing on patents, in advisory work as well as in litigation.

FRAND and standard essential patents · Patent contracts · Tell us about your situation