Compulsory licence

A compulsory licence is a licence imposed on the holder of a patent, without its consent, by a judicial or administrative decision. It is an exception to the exclusive right of the patentee. French law organises it in Articles L. 613-11 et seq. of the Intellectual Property Code, in accordance with Article 5A of the Paris Convention and Article 31 of the TRIPS Agreement. The provisions can be consulted on Légifrance.

The cases of compulsory licences

First, the licence for failure to work. Any public or private person may request a licence where the holder has not begun to exploit the invention or made serious preparations to do so within three years of grant or four years of filing, without legitimate excuse. Second, the dependency licence, provided for in Article L. 613-15, which allows the holder of an improvement patent to exploit a dominant invention where it represents an important technical advance and a considerable economic interest. Third, ex officio licences in the interest of public health, the national economy or national defence, decided by the administration.

Procedure and conditions

The compulsory licence for failure to work or for dependency is requested from the judicial court. The applicant must establish that it could not obtain a licence amicably and that it is in a position to exploit the invention seriously. The licence granted is non-exclusive. The court sets its duration, its scope and the amount of the royalties. It may only be assigned together with the business, or the part of the business, to which it is attached.

Key points

In practice, the compulsory licence remains rare in France. Its threat nevertheless plays a role in negotiations, notably where a patent blocks the exploitation of a dependent technology. It differs from the FRAND licence, which stems from a voluntary commitment of the holder of an essential patent. The firm advises patentees and licence seekers in these situations and in the negotiation of patent licence agreements.

To go further: the Covid-19 crisis and the ex officio licence, and the debate on waiving patents.