Partial assignment of intellectual property rights

A partial assignment is the transaction by which the owner of an intellectual property right transfers to a third party only a fraction of that right, whether an undivided share, part of the goods or services covered, certain modes of exploitation or certain territories. The French Intellectual Property Code expressly allows it for patents, the rights in which may be transferred in whole or in part under Article L. 613-8, and for trade marks under Article L. 714-1. In copyright, partial assignment is the rule, since each right assigned must be delimited. Its regime therefore varies considerably according to the subject matter of the right.

Partial assignment of a trade mark

A trade mark may be assigned for only part of the goods or services covered by the registration, which leads to the division of the registration into two separate titles. Article L. 714-1 IPC, on the other hand, prohibits any territorial limitation, even in a partial assignment, in order to preserve the unity of the mark throughout France. The EU trade mark, being unitary, can likewise only be transferred for the whole of the Union. The main risk lies in two owners of the same sign coexisting for similar goods, which may create a likelihood of confusion and expose the marks to an application for revocation if their use makes them misleading. A coexistence agreement usefully accompanies the assignment.

Partial assignment of a patent

A partial assignment of a patent most often takes the form of the assignment of a share, which gives rise to co-ownership governed by the rules on patent co-ownership, or of the assignment of certain national parts of a European patent. A European patent with unitary effect, by contrast, can only be transferred for all the participating states. An assignment limited to a field of use raises greater difficulties, since the title cannot be split by claim or by use, and the parties generally prefer an exclusive licence limited to the relevant field. The assignment must be in writing, failing which it is void, and must be registered to be enforceable against third parties.

Partial assignment in copyright

Article L. 131-3 IPC requires each of the rights assigned to be separately mentioned and the field of exploitation to be delimited as to its extent, purpose, place and duration. Article L. 122-7 IPC provides that the assignment of the performance right does not entail that of the reproduction right. Any assignment of copyright is therefore partial by nature, and rights not expressly assigned remain with the author. Contracts are construed strictly, in favour of the author, so that any form of exploitation not provided for requires a fresh authorisation.

Key points

A partial assignment makes it possible to transfer a fraction of an intellectual property right, but each right sets its own limits. A trade mark is assigned by goods or services and not by territory, a patent is most often assigned by share or by country, and copyright is assigned only within the limits precisely stipulated. The scope transferred should be defined precisely, coexistence between assignor and assignee anticipated and the necessary registrations made without delay.

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

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