Patent assignment agreement

The patent assignment contract is the contract by which the holder of a patent or of a patent application transfers its ownership to an assignee, in whole or in part, for consideration or free of charge. It brings about a change of owner, unlike the patent licence, which confers only a right of exploitation. The patent assignment contract is governed by Articles L. 613-8 et seq. of the French Intellectual Property Code, available on Légifrance, and by the ordinary law of sale.

The formalities of the patent assignment

First, the assignment must be recorded in writing, on pain of nullity. Second, it is enforceable against third parties only after recording in the National Patent Register kept by the INPI. Before that recording, the assignee cannot sue for infringement and runs the risk that a second, recorded purchaser will prevail. For a European patent still in prosecution, the transfer is recorded in the register of the European Patent Office, then in each national register after grant. Third, the assignment of a unitary patent necessarily covers all participating states.

The essential clauses

The contract identifies the assigned titles by their numbers and territories, states whether the assignment also covers the priority right, divisional applications and improvements, and sets the price, as a lump sum or in proportion to future exploitation. It organises the assignor’s warranties: existence of the title, payment of the renewal fees, absence of undeclared licences, pledges or litigation, absence of third party claims. The warranty of validity of the patent is not owed as of right and must be stipulated. The contract also settles the conduct of pending infringement actions, the assignor’s cooperation in later proceedings and the transfer of the associated know-how.

Key points

In practice, a patent assignment should be preceded by an ownership audit, in particular where the invention was made by employees or in a collaboration, and by a validity analysis. The tax consequences, notably the regime of Article 238 of the French General Tax Code, are examined with the company’s financial advisers. The firm drafts and negotiates these contracts and acts in disputes over their performance, as presented on the page contracts and in the entry assignment.