Patent co-ownership

Patent co-ownership is the situation in which a patent or a patent application belongs to several persons. It most often arises from a joint invention, a research agreement or a succession. The Intellectual Property Code gives it a specific regime in Articles L. 613-29 to L. 613-32, which can be consulted on Légifrance, setting aside the joint ownership rules of the Civil Code. Patent co-ownership is known as a source of deadlock where no co-ownership agreement has been concluded.

The rights of each co-owner

First, each co-owner may exploit the invention for its own benefit, subject to fairly compensating the other co-owners who do not personally exploit the invention or have not granted a licence. Failing agreement, the compensation is set by the judicial court. Next, each co-owner may sue for infringement for its sole benefit, provided it notifies the writ to the other co-owners, the court staying proceedings until that notification is evidenced. Finally, each co-owner may grant a non-exclusive licence for its own benefit, subject to fairly compensating the others, who have a period to object to the project by offering to acquire the share of the notifying party. An exclusive licence may only be granted with the agreement of all co-owners or by court authorisation.

Transfer of shares and co-ownership agreement

Each co-owner may transfer its share. The other co-owners have a pre-emption right for three months from notification of the proposed transfer, the price being set, failing agreement, by the judicial court. The co-owners may derogate from all these rules by a co-ownership agreement, which organises exploitation, the sharing of royalties, the conduct of proceedings, the payment of renewal fees and the fate of improvements. This agreement is strongly recommended from the outset of co-ownership, in particular in consortium agreements and research agreements.

Key points

In practice, unorganised patent co-ownership creates three risks: paralysis of the exclusive licence, disagreement over the exploitation compensation and uncertainty over the conduct of litigation. Disputes concern the amount of the compensation, the validity of licences granted by a single co-owner and the exercise of the pre-emption right. The firm drafts co-ownership agreements and acts in these disputes, as presented on the page contracts and in the article how to manage patent co-ownership.