An International Guide to
Patent Case Management for Judges

13.4.4 Patent claims action

Under Article L. 611-6 of the IPC, the industrial property title right referred to in Article L. 611-1 belongs to the inventor or their successor in title. Article 60 of the EPC contains identical provisions. These provisions are interpreted as meaning that the exceptions to the principle that the patent belongs to the inventor may only arise from the law.²⁸⁷

Under Article L. 611-8 of the IPC, if an industrial property title has been claimed either for an invention taken from the inventor or their successors in title, or in violation of a legal or contractual obligation, the injured party may claim ownership of the application or the title granted.

It is specified in Article 74 of the EPC that, unless the Convention provides otherwise, the European patent application as an object of property shall, in each designated Contracting State and with effect for such state, be subject to the law applicable in that state to national patent applications.

Article 139(3) of the EPC adds that any Contracting State may prescribe whether and on what terms an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications and patents.

Making use of this freedom, French legislators have retained a principle of non-accumulation of two titles for the same invention (unlike the unitary European patent).

Article L. 614-13 of the IPC thereby provides that:

where a French patent covers an invention for which a European patent has been granted to the same inventor or their successor in title with the same date of filing or of priority, the French patent shall cease to have effect either on the date by which the time limit for lodging an objection to the European patent expires without an objection having been lodged, or on the date on which opposition proceedings are closed, with the European patent having been upheld [...].

Unless some of the claims under the French patent are not included in the European patent, the substitution is total.²⁸⁸ The French patent and the European patent will nonetheless continue to coexist as long as the European patent is not granted irrevocably.

13.4.4.1 Jurisdiction of the French court

If the patent applicant has France as their domicile or main place of business, only the Paris Judicial Court has jurisdiction in claim actions for French patents.

For European patent applications, the jurisdiction of the Paris Court is also determined by the convergent provisions of Regulation (EU) No. 1215/2012 – Brussels Ia Regulation and the Protocol on Recognition.

A European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating member states as a national patent of the participating member state in which that patent has unitary effect and in which, according to the European Patent Register: (a) the applicant had their residence or principal place of business on the date of filing of the application for the European patent; or (b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent, in accordance with the provisions of Article 7 of Regulation (EU) No. 1257/2012 of December 17, 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection.

13.4.4.2 Jurisdiction over foreign counterparts of French patents

When the patent filing in France constitutes an initial application under Article 4 of the Paris Convention and when it is regular, the person who files shall be the beneficiary of the French patent application and is entitled to claim, before the French courts, ownership of European and American patents, applications for which were filed in infringement of their rights by a third party who was not a valid assignee of the right of priority.²⁸⁹

13.4.4.3 Applicable law

Only French law is applicable to ownership of a French patent, in particular when it constitutes a “first application” under Article 4 of the Paris Convention.

Under Article 74 of the EPC, the European patent as an object of property shall, in each designated Contracting State, be subject to the law applicable in that state.

However, Article 60(1) states that:

[t]he right to a European patent shall belong to the inventor or their successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has the place of business to which the employee is attached.

13.4.4.4 Conditions for bringing action

Article L. 611-8 of the IPC envisages only two cases in which a claims action is possible:

• the invention has been removed from its inventor or their successors in title;²⁹⁰

• the filing has only been possible through the breach of a legal or contractual obligation.

As a result, the Court of Appeal violates this article when it grants a claim for ownership of an invention patent without noting the existence of either of those conditions.²⁹¹

The plaintiff must establish that they are the real inventor, i.e., they must demonstrate that they are the originator of the information on the basis of which the patent application was filed.²⁹²

Claims actions are prohibited for five years following publication of the grant of the industrial property title (since 2014), except in cases of bad faith at the time of grant or acquisition of the patent, in which case the limitation period begins upon expiry of the title.

The limitation period to take action to claim a European patent that, insofar as it designates France, completely replaced the French patent prior to the filing of the claims action, begins on the date of publication of the grant of the European patent and not on the date of grant of the French patent.²⁹³

13.4.4.5 Remedies: suspension of the grant proceedings and transfer of the patent and its proceeds

Article R. 611-18 of the IPC provides that patent claims actions shall be recorded in the National Patent Register at the request of the person who brought the action. Patent claims actions also have a suspensive effect on the grant proceedings (Article R. 611-19 of the IPC/Rule 14 of the EPC Implementing Regulations).

When the claim application is accepted, ownership of the patent is transferred, retroactively, from the initial date.²⁹⁴

When the action concerns the right to a European patent application, Article 61 of the EPC applies. There is no similar provision in French law.

However, during the grant proceedings, the EPC allows, under Articles 61 and 13 of its Implementing Regulations, a party whose patent right has been infringed to prosecute the European patent application as their own application in place of the applicant.

In that respect, a patent claims action brought before a national judge has a suspensive effect on the grant proceedings (Article R. 611-19 of the IPC and Rule 14 of the EPC Implementing Regulations).

Bad faith is not a condition for claims action in that breach of an obligation or removal may occur without bad faith. In such cases, the restitution of the proceeds of exploitation of the relevant patent (profits arising from the use of licenses) to the rightful holder may only occur from the date of the claims notice.²⁹⁵ In cases of bad faith, the proceeds must be repaid from the date of filing.