IP Law and inventions by non-employees

Decree n° 2021-1658 of December 15, 2021 relating to the devolution of intellectual property rights on assets obtained by authors of software or inventors who are not employees or public agents accomodated by a legal entity carrying out research.

An decree published in the Official Journal on December 16, 2021 modifies the rules on the ownership of rights to work performed by personnel accomodated by research entities, whether public or private.

The decree has important practical consequences for the intellectual property departments of companies. It focuses on two areas of intellectual property law: software and inventions.

1/ The legal context of the decree

Until now, rights on software and inventions were only subject to a specific regime if they were made by employees or public agents (articles L.113-9 and L.611-7 of the Intellectual Property Code). This was to be understood in a strict manner. Any other person who is a member of a company, but not an employee (trainee, temporary worker, or other) was considered as a third party to the entity accomodating him[1].

This created practical difficulties for entities accomodating trainees or using temporary workers, or other staff members who do not have an employment contract.

The Decree aims at extending the rules of devolution of intellectual property rights on software and patents to any natural person "accomodated under an agreement by a legal person under private or public law carrying out research". This can be understood in a broad sense. The Report to the French President mentions "trainees, foreign doctoral students and professors or directors emeritus, and who carry out missions within and with the means of a legal person of public or private law carrying out research."

[1] Cour de cassation, 25 avril 2006, n°04-19.482, CNRS c. M. Puech

2/ Rights on software

The economic rights of authors over software produced by these persons are governed by a new article L.113-9-1 of the Intellectual Property Code, which states that these rights are immediately vested in the accomodating structure.

In order to adapt to the specificity of internship contracts, in particular, this devolution of rights only occurs on the condition that the individual receives "compensation" and is placed under the authority of a manager of the accomodating structure.

 

3/ Rights on inventions

The rights on inventions are governed by a new article L.611-7-1 of the Intellectual Property Code. It takes up the classification set out in article L.611-7 of the same Code for inventions made by employees with service inventions, inventions outside the scope of employment but assignable to the employer and inventions outside the scope of employment and non-assignable to the employer, according to identical criteria.

The accomodated physical person does not receive an « additional remuneration » as is the case with service inventions, but rather a "financial compensation".

The text also provides that the assignment of inventions outside the scope of employment made by a accomodated person will take place "during the time of his/her accomodation". It will therefore be necessary for the research entities to react in time, if they wish to take advantage of this prerogative.

The decree also refers to a decree, which will set out the practical modalities of invention declaration, as is the case for article L.611-7 (articles R.611-1 and following of the French Intellectual Property Code).

Finally, the decree extends the use of the CNIS (conciliation commission for employees inventions) to any invention made by a person accomodated by a legal entity carrying out research.

4/ Consequences

The decree thus aims to simplify the management of research work carried out in companies, by extending the mechanisms of automatic devolution of intellectual property rights for their benefit.

It is nevertheless based on certain ambiguous definitions (in particular that of "legal person under public or private law carrying out research"), which case law may clarify in the future.

While the legislator's objective is clear, the implementation of this mechanism may raise some practical questions. In particular, care must be taken in drafting the clauses provided for in the accomodation agreements and in reacting sufficiently early for the assignment inventions of inventions outside the scope of employment.

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