If, in principle, the right to patent belongs to the’inventor [1], a specific regime is however instituted by the articles L. 611-7 and Article L. 611-7-1 Intellectual Property Code, which finds application for inventions by employees, non-employees hosted by a legal entity conducting research, and civil servants or public agents (1), which inventions are then classified into three distinct categories (2).

1. Scope of Articles L.611-7 and L.611-7-1 of the CPI

a) Applicable law

Firstly, it should be recalled that, where there is an element of foreignness (nationality of one of the contracting parties being foreign / place of performance of the contract outside France), the law applicable to the employment contract, in the absence of an express choice by the parties, is the law of the country in which or from which the worker-inventor habitually carries out their work.[1], and this regardless of the office at which the patent is or will be filed.

b) Quality of the inventor

Regarding the provisions of French law, for an employer/legal entity to claim an invention, the inventor must fall within the scope of articles L.611-7, R.611-11 You L.611-7-1 of the CPI. Therefore, either:

That the inventor is an employee, in accordance with Article L611-7 of the Intellectual Property Code, an employee being understood as a natural person performing a service for their employer, following their directives and in exchange for remuneration. It follows that the inventor must be bound to the employer by a fixed-term or indefinite contract.

And the invention made by the employee must have been developed while the employment contract was in force. Thus, it is considered to have been developed during the employment contract:

• the invention pre-existing the contract but developed during the performance of the contract; ;
• The invention for which the development began during the employment relationship, but was finalised after the termination of this relationship (due to voluntary departure, dismissal, retirement).

Whether the inventor is a civil servant/public official, since he is then also subject to the provisions of article L611-7 of the CPI (unless contractual stipulations are more favorable), under the terms of article R611-11 of the CPI.

That the non-salaried inventor be hosted by a legal entity carrying out research under an agreement, in accordance with article L611-7-1 of the CPI, which legal entity may:

• to be a moral person at least half of whose permanent research staff are employees under private law[2];
• to be a moral person whose more than half of permanent research staff are public officials[3].

Trainees, doctoral students, professors and emeritus directors are all covered by this text.

Conversely, independent inventors, meaning those who are self-employed or have entered into a research service contract with a private/public entity carrying out research but are not hosted within the company's structure, are not covered by Article L.611-7-1 of the CPI. In this regard, it is recommended that a legal entity wishing to obtain the right to file a patent application should first settle the question of ownership of the right to the patent for an invention developed during the provision of services, since, in the absence of a contractual stipulation, the right to the patent will remain the inventor's property.

Conversely, in the hypothesis where the inventor, in principle, falls within the scope of Article L611-7-1 of the CPI, and the legal entity wishes to circumvent this application, it is recommended that, in order to escape it, the contract states that the service will not be carried out on the company's premises or with the company's resources.

2. Qualification of the invention

Articles L611-7 and L611-7-1 of the CPI distinguish between three categories of invention:

Mission inventions

These are those developed by the inventor in the execution of an inventive mission entrusted to them by the employer/legal entity (a mission which must correspond to the inventor's actual duties).[4]These inventions belong to the employer/legal entity alone, which must in return pay the inventor additional remuneration.

In a case dated 31 January 2018[5], the Court of Cassation had to rule on the nature of an invention transferred between two employers as part of an asset sale. In this specific case, the employee had carried out research work as part of an inventive mission entrusted to her by the assigning company. The assignee, who subsequently became the employee's new employer, had filed a patent based on these elements following the transfer. The Court therefore considered that the said transfer of the results of the work did not grant the assignee the status of successor to the employer, from which it followed that the assignee was not entitled to argue to the employee that the invention for which she was the author was a mission-related invention.

Out-of-scope inventions attributable

These are those developed on the inventor's own initiative but having a link with the company/public body/legal person because they were carried out either:

• During the performance of the employee's duties
• Outside of its functions but thanks to the knowledge/use of specific techniques/means of the company/public body;
• In the field of the company's/public body's activities.

In principle, these inventions belong to the inventor, but the employer/corporate body can exercise its right of attribution to acquire ownership and must then pay the inventor a fair price in return.

Non-attributable out-of-scope inventions

These are inventions developed by inventors who have no inventive mission, or inventions that have no connection with the activities of the employer/corporate body. These inventions belong to the inventor alone, who can appropriate them by filing a patent and exploit them freely.

 

[1] European Regulation No 593/2008, known as «Rome I Regulation», article 3 on referral from article 8.

[2] Article R. 611-21 du CPI.

[3] Article R.611-22 du CPI.

[4] Court of Cassation, Commercial Chamber, 18 December 1986, appeal No 85-14.621 P.

[5] Court of Cassation, Social Chamber, 31 January 2018, Mr Y v. Companies Télécom Design and Info Networks Systems, appeal no. I6-13.262.