The metamorphosis of the trainee into an employee inventor

This metamorphosis of the trainee into an inventeur salarié went almost unnoticed and drew little or no comment, yet it is an important reform of French law.

Ordinance No. 2021-1658 of 15 December 2021 extends the regime governing the vesting of rights in software (Article L. 113-9-1 of the French Intellectual Property Code) and inventions de salariés (L. 611-7-1 of the French Intellectual Property Code) to natural persons who have neither a contract of employment nor the status of public servant, and who carry out assignments within, and using the resources of, a public or private legal entity engaged in research. Those concerned include trainees, foreign doctoral students, professors and directors.

It is, more particularly, a legislative response to the dispute between the CNRS and one of its trainees. In a judgment of 25 April 2006, the Cour de cassation had held that the right to the patent in theinvention developed during his traineeship vested in the trainee (Cass. com., 25 April 2006, No. 04-19.482). The Court of Appeal had nonetheless held that the CNRS was the trainee’s successor in title by reason of its internal rules, which provided that rights in inventions made within the CNRS by students vested in it. It fell to the administrative courts to assess the lawfulness of those rules (CA Paris, 12 September 2007, RG No. 06/15211). The Paris Administrative Court (TA Paris, 11 July 2008, No. 0717692) and then the Conseil d’État (CE, 22 February 2010, No. 320319) held the rules unlawful, on the ground that they were ultra vires, since they amounted to stripping the users of that public service of their industrial property rights.

This reform, which follows an economic logic aimed at preventing a trainee from holding patent rights (that is, the right to file a patent application) and copyright (in software), is hard to justify as a matter of statutory construction. There is no employment relationship, so attributing the results of activity carried out merely under an assignment is not justified. As a matter of principle, however, and beyond that textual logic, legal certainty must prevail.

There is little doubt that the automatic vesting of patent rights and copyright (in software) strengthens legal certainty. It remains that this surgical reform, covering only two rights, will not solve every problem. Employers will still have to use contractual routes to secure other creations — copyright in a software interface, for example.

Let us hope, then, that in future the parties concerned will be consulted, so as to avoid piecemeal reform in favour of comprehensive harmonisation.