Recordal in the national register

Recordal in the national register is the formality by which instruments that transfer or alter the rights attached to an industrial property title, such as an assignment, a licence, a pledge or a change of owner or name, are entered in the register kept by INPI, the French patent and trade mark office. It is provided for by Article L. 613-9 of the French Intellectual Property Code for patents and by the corresponding provisions for trade marks and designs. Recordal does not determine the validity of the instrument between the parties, but its enforceability against third parties.

Instruments subject to recordal

All instruments altering or transferring the rights attached to an application or a granted title are recorded. These are first of all assignments, whether outright or partial, contributions to a company and universal transfers of assets resulting from a merger or demerger. They are next licences, exclusive or not, sub-licences and grants of exploitation rights. They are finally pledges, seizures and court decisions affecting the title, as well as changes in the owner’s name or address. The request for recordal is filed on a form accompanied by a copy of the instrument or a sufficient extract, and is subject to a fee. The registers are public and can be consulted online.

Enforceability against third parties

Until the instrument is recorded, it cannot be relied on against third parties, who may legitimately deal with the registered owner. The acquirer of an unrecorded patent therefore cannot assert its right against a second acquirer who has recorded its own, or against a creditor who has recorded a pledge. Failure to record also paralyses court action. An unrecorded assignee has no standing to sue for infringement until the position is regularised, which may happen while proceedings are pending. Likewise, a licensee may join proceedings or sue, where the law allows it to, only if its licence is recorded. A third party who had personal knowledge of the instrument cannot, however, rely on the failure to record.

EU titles and international titles

Instruments concerning a European Union trade mark or a Community design are recorded in the EUIPO register, with equivalent effects laid down by Regulation (EU) 2017/1001 and Regulation (EC) No 6/2002. European patents validated in France are recorded in the national register for the French part, while the EPO register takes recordals during grant and opposition proceedings, and the register of the Unified Patent Court those concerning the unitary patent. An international transaction therefore requires parallel recordals in each register concerned.

Key points

Recordal in the national register makes assignments, licences and pledges enforceable against third parties and determines whether an assignee may sue for infringement and a licensee may join proceedings. It does not affect the validity of the instrument between the parties. Record without delay after any signature, check the chain of recordals during due diligence and provide for recordals in each national, European or unitary register concerned.

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

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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