The French Intellectual Property Code states that “The right to the [patent] shall belong to the inventor or his successor in title” (Article L.611-6) such as his assignee. And “Where an application for the grant of [a patent] has been made either for an invention unlawfully taken from an inventor or his successors in title or in violation of a legal contractual obligation, the injured party may claim ownership of the application or of the granted title” (Article L.611-8).
This means that, except where there is a transfer of right, a patent can only be filed by the inventor. Sometimes though, inventors work for hire according to detailed instructions and there is what can be considered as a legitimate opinion that the invention should belong to the company that ordered the work and paid for it.
The Court of Appeals of Paris has just issued a decision on this very situation (October 12, 2012).
The facts were as follows.
In the need to improve the performance and the manufacturing of technical parts it industrially produced, a French group ordered to a French company a feasibility study. A few months after delivering the study, the French company discovered that its client’s American subsidiary had filed a U.S. patent application and a request for a PCT extension designating France.
Considering the claims of the patents were entirely reproducing the technical solutions developed and contained in its study, the French company filed a claim of ownership before the French Courts.
The question at issue was to decide which company had a right to the patent. More precisely the judges were to decide if the specifications of the patent were already included in the terms of the original order or if they resulted from the content of the feasibility study made in response to the order.
Based on a detailed analysis of the commercial and contractual relationships between the parties, and especially on the original order letter requesting the French company “to think up of a way to achieve the desired results”, the court concluded that the applicant of the patent ““annot be considered as an inventor but only as the ordering party, that is the one that poses a problem to solve and only indicates the goal to achieve without giving the methods or means to do so”. The applicant merely “provided […] guidelines with the mission of achieving a result that it could apparently not achieve itself with its own abilities and means”.
For the Court the company that found solutions to problems that had been raised and that demonstrated creative spirit was the company that conducted the tests and developments on the basis of the technical parameters it was provided with.
The Court consequently stated that the applicant had improperly appropriated technical information that was only the method recommended by the technical director of the feasibility study and ordered the transfer of patents to the claiming party.
This decision is an opportunity to remind that it is strongly recommended that the ownership of inventions and the right to patents be contractually set at the beginning of trade relations to avoid potentially important consequences.