EMPLOYEE INVENTIONS : THE FRENCH COUR DE CASSATION OFFERS PRECISIONS ON ITS CASELAW

In early January 2022, the Cour de cassation handed down an interesting decision on employee invention.

 

Article L.611-7 of the French Intellectual Property Code provides for an automatic assignment of rights to an invention made by an employee with an inventive mission to the employer.

The previous case law of the Cour de Cassation, rendered in a factually complex case, was strict as to the quality of the person who could claim these rights[1]. This allowed an employee to claim ownership of a patent filed on his work by an assignee of his employer.

 

The Cour de Cassation overturned this case law in a decision of 5 January 2022.

In substance, the Court held (points 9 and 10) that :

 

- By virtue of the aforementioned provisions of the Intellectual Property Code, the rights on the inventions of mission are the property of the employer,

 

- There is no provision preventing the employer from assigning these rights to a third party,

 

- The assignee who files the patent may oppose the fact that the patent relates to a mission invention to the ownership-claiming employee, considering that the latter never had any rights in this respect.

 

On the basis of this new case law, employers are therefore free to assign their rights to their employees' inventions to any third party they wish, without the ownership of any patents being efficiently challenged.

The practical consequences can be significant within groups of companies, whose patent portfolios are not always held by the entity employing the employees. Beforehand, this could cause uncertainty in the management of patent portfolios.

 

Although this decision is interesting, it raises several important questions still left unanswered.

 

In particular, it is not clear how to value the patent if it is assigned to another company in the group, or to a third party. In this case, the economic value of the invention is difficult to assess and the additional remuneration due to the employee (which is largely based on the said economic value according to the case law) is difficult to define correctly.

 

This decision gives employers more freedom in managing and valuing their employees' inventions.

Nevertheless, it still requires employers to be rigorous in building chains of rights assignment to such inventions and to closely monitor any claims that may be made by their employee inventors, and their consequences.

 

[1] Cour de cassation, 31 January 2018, n°16-13.262

 

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