Transfer of IP rights in France

  1. Patents: Assignment
    1. 1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 
    2. 2. Which formalities must be met to record a patent assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the patent assignment? Does the record in the patent register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the patent is held by more than one proprietor? 
    5. 5. Is there a need to appoint a domestic professional representative?
    6. 6. Which official fees (if any) arise from recording a patent assignment?
  2. Patents: Licensing
    1. 7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 
    2. 8. Which formalities must be met to record a patent licence? Which supporting documents are required?
    3. 9. What are the legal consequences of not recording the patent licence? Does the record in the patent register have declarative or constitutive effect?
    4. 10. Is there a need to appoint a domestic professional representative?
    5. 11. Which official fees (if any) arise from recording a patent licence?
  3. Patents: Pledge
    1. 12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?
  4. Trademarks: Assignment
    1. 1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 
    2. 2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?
    3. 3. What are the legal consequences of not recording the trademark assignment? Does the record in the trademark register have declarative or constitutive effect?
    4. 4. Are there specific formalities in case the trademark is held by more than one proprietor? 
    5. 5. Are there specific formalities in case a trademark is only partially assigned? 
    6. 6. Is there a need to appoint a domestic professional representative?
    7. 7. Which official fees (if any) arise from recording a trademark assignment?
  5. Trademark: Licensing
    1. 8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 
    2. 9. Which formalities must be met to record a trademark licence? Which supporting documents are required?
    3. 10. What are the legal consequences of not recording the trademark licence? Does the record in the trademark register have declarative or constitutive effect? 
    4. 11. Are there specific formalities in case a trademark is only partially licenced? 
    5. 12. Is there a need to appoint a domestic professional representative?
    6. 13. Which official fees (if any) arise from recording a trademark license?
  6. Trademark: Pledge
    1. 14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Patents: Assignment

1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? 

To transfer a patent, a patent assignment contract must be entered into between the assignor(s) and the assignee(s). As provided by Article L. 613-8 of the French Intellectual Property Code (“IPC”): the assignment of a patent is made in writing, failing which it is void.

Publication of the transfer is not a condition of the validity of such transfer. Pursuant to Article L. 613-9 IPC, all acts transferring or modifying the rights attached to a patent must, in order to be enforceable against third parties, be published on the National Patent Register held by the National Patent Office (INPI). However, even without such publication, an assignment may be enforceable towards third parties who had knowledge of it.

2. Which formalities must be met to record a patent assignment? Which supporting documents are required?

The recording request for a patent assignment contract can be made online on the website of the National Patent Office (INPI) or by post to the National Patent Office’s address (INPI). 

There are two procedures: a standard procedure that allows for recording in a few weeks and a fast-track procedure that is processed in a few days, if the request is regular.

2.1 Are original supporting documents essential or are copies sufficient?

It is not mandatory to provide an original copy of the assignment contract, a simple copy is sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

No legalization and/or notarization required. If the document is in a foreign language, you must attach a translation. There is no specific submission requirement for the translation.

2.3 Is there a must to use a specific form?

Yes, there is a specific form provided by the National Patent Office (INPI).

If you do not wish to disclose certain information of the assignment contract, you have the option of providing only an extract of the document. But the extract must absolutely show certain information such as the identity of the parties (surnames, first names or legal form, full address), signatures, the type of deed (at least the article indicating that it is an assignment), the identification of the title/patent concerned (its number).

After the recording request is made, the summary of the recording request with a number and the date of registration is immediately accessible from the National Patent Office (INPI)’s registration portal online, as well as all the documents of the procedure. Approximately 4 to 6 weeks after the registration (for the standard procedure), the registration is published in the Official Bulletin of Industrial Property (BOPI) in order to make it public (to third parties).

The recording of the patent assignment contract has only a declarative effect. 

If the patent assignment contract is not registered in the National Patent Register, it would still be valid between the contracting parties, but it could not be enforceable against third parties as the act has not been made public/accessible to them. Consequently, it is highly recommended for the assignee of a patent to seek registration before initiating any infringement action against third parties. Moreover, a non-registered assignee of a patent will not be entitled to receive damages before it is mentioned as the recorded owner of the patent.

4. Are there specific formalities in case the patent is held by more than one proprietor? 

Yes. If the patent to be assigned is held by co-owners, it needs to be specified in the patent assignment contract and indicated in the recording request, so all actual proprietors of the concerned patent be mentioned as co-owners in the National Patent Register.

Pursuant to Article L. Article 613-29 IPC, each co-owner may assign its share in the patent. The other co-owners have a right of pre-emption for a period of 3 months from the notification of the proposed assignment. In the absence of agreement on the price, it is fixed by the court. 

It should be noted that these rules may be derogated from by a co-ownership agreement in accordance with article L. 613-32 IPC.

5. Is there a need to appoint a domestic professional representative?

No. It is possible but not mandatory to be represented by a domestic professional representative.

This representative could be anyone. In which case it is mandatory to provide a power of attorney unless your representative is an industrial property attorney or a lawyer.

6. Which official fees (if any) arise from recording a patent assignment?

For the standard procedure: the fee is 27€ per patent concerned (between 1 and 10 patents) and for 10 patents and more: flat fee of 270€ provided the patents are included in the same application.

For the fast-track procedure: same fees with a supplement of 52€ per patent.

Patents: Licensing

7. Which forms of licensing patents exist and which ones must be recorded in the patent register to become effective (if any)? 

As provided by Article L. 613-8 IPC, there are exclusive or non-exclusive patent licenses that may cover all or part of the patent(s) concerned. A patent license contract must be established in writing, failing which it is void. 

It is not mandatory to record any type of patent license contract in the National Patent Register. 

It however recommended for the licensee to be registered, particularly if it wants to take action in case of infringement of the licensed patent.

8. Which formalities must be met to record a patent licence? Which supporting documents are required?

The recording request for a patent license contract can be made online on the website of the National Patent Office (INPI) or by post to the National Patent Office’s address (INPI). 

There are two procedures: a standard procedure that allows for recording in a few weeks and a fast-track procedure that is processed in a few days, if the request is regular.

8.1 Are original supporting documents essential or are copies sufficient?

It is not mandatory to provide an original of the license contract, a copy of the license contract signed by all contracting parties is sufficient.

8.2 Are there any legalization and/or notarization and/or translation requirements?

No legalization and/or notarization required. If the document is in a foreign language, you must attach a translation. There is no specific submission requirement for the translation.

8.3 Is there a must to use a specific form?

Yes, there is a specific form to fulfil provided by the National Patent Office (INPI).

If you do not wish to disclose certain information of the license contract, you have the option of providing only an extract of the document. But the extract must absolutely show certain information such as the identity of the parties (surnames, first names or legal form, full address), signatures, the type of deed (at least the article indicating that it is an license), the identification of the title/patent concerned (its number).

After the recording request is made, the summary of the recording request with a number and the date of registration is immediately accessible from the National Patent Office (INPI)’s registration portal online, as well as all the documents of the procedure. Approximately 4 to 6 weeks after the registration (for the standard procedure), the registration is published in the Official Bulletin of Industrial Property (BOPI) in order to make it public (to third parties).

The recording of the patent license contract has only a declarative effect. 

Recording the license is highly recommended if the licensee wants to take action on the basis of the licensed patent (and required if the licensee wants to act without the patentee). Recording the license will also impact the possibility for the licensee to claim for damages in case of infringement. 

10. Is there a need to appoint a domestic professional representative?

No. It is possible but not mandatory to be represented by a domestic professional representative.

This representative can be anyone. In which case it is mandatory to provide a power of attorney unless your representative is an industrial property attorney or a lawyer.

11. Which official fees (if any) arise from recording a patent licence?

For the standard procedure: the fee is 27€ per patent concerned (between 1 and 10 patents) and for 10 patents and more: flat fee of 270€ provided the patents are included in the same application.

For the fast-track procedure: same fees with a supplement of 52€ per patent.

Patents: Pledge

12. It is possible to pledge a patent? If yes, is it required to record such pledge in the patent register?

Yes, it is possible to pledge a patent, but it is not mandatory to record such pledge in the National Patent Register.

It is the same procedure of recording than for the patent assignment contract and the patent license contract (see above).

Trademarks: Assignment

1. How may a trademark be assigned (by law and/or transaction) and is it required to record the assignment in the national trademark register to become effective? 

To transfer a trademark (in full or part), a trademark assignment contract must be entered into between the assignor(s) and the assignee(s). As provided by Article L. 714-7 IPC, the assignment of a trademark is made in writing, failing which it is void.
Publication of the transfer is not a condition of the validity of such transfer. As provided by Article L. 714-7 IPC, any transfer or modification of the rights attached to a “registered” trademark must, in order to be enforceable against third parties, be entered in the National Trademark Register. However, even without such publication, an assignment may be enforceable towards third parties who had knowledge of it.

2. Which formalities must be met to record a trademark assignment? Which supporting documents are required?

The recording request for a trademark assignment contract can be made online on the website of the National Trademark Office (INPI) or by post to the National Trademark Office’s address (INPI). 

There are two procedures: a standard procedure that allows for recording in a few weeks and a fast-track procedure that is processed in a few days, if the request is regular.

2.1 Are original supporting documents essential or are copies sufficient? 

It is not mandatory to provide an original of the assignment contract, a copy of the assignment contract signed by all contracting parties is sufficient.

2.2 Are there any legalization and/or notarization and/or translation requirements?

No legalization and/or notarization required. If the document is in a foreign language, you must attach a translation. There is no specific submission requirement for the translation.

2.3 Is there a must to use a specific form?

Yes, there is a specific form to fulfil provided by the National Trademark Office (INPI).

If you do not wish to disclose certain information of the assignment contract, you have the option of providing only an extract of the document. But the extract must absolutely show certain information such as the identity of the parties (surnames, first names or legal form, full address), signatures, the type of deed (at least the article indicating that it is an assignment or license), the identification of the title/trademark concerned (its number).

After the recording request is made, the summary of the recording request with a number and the date of registration is immediately accessible from the National Trademark Office (INPI)’s registration portal online, as well as all the documents of the procedure. Approximately 4 to 6 weeks after the registration (for the standard procedure), the registration is published in the Official Bulletin of Industrial Property (BOPI) in order to make it public (to third parties).

The recording of the trademark assignment contract has only a declarative effect. 
If the trademark assignment contract is not registered in the National Trademark Register, it would still be valid between the contracting parties, but it could not be enforceable against third parties as the act has not been made public to them.

Consequently, it is highly recommended for the assignee of a trademark to seek registration before initiating any infringement action against third parties. Moreover, a non-registered assignee of a trademark will not be entitled to receive damages before it is mentioned as the recorded owner of the trademark.

4. Are there specific formalities in case the trademark is held by more than one proprietor? 

Yes. If the trademark to be assigned is held by co-owners, it needs to be specified in the trademark assignment contract and indicated in the recording request, so all actual proprietors of the concerned trademark be mentioned as co-owners in the National Trademark Register.

There are no specific rules for the co-ownership of trademarks in the IPC (unlike patents). Therefore, the general rules of co-ownership apply as provided for by articles L. 815 et seq. of the French Civil Code. Each co-owner may assign its share in the trademark. The other co-owners have a right of pre-emption. In the absence of agreement on the price, it is fixed by the court. 

5. Are there specific formalities in case a trademark is only partially assigned? 

No. It only needs to be specified in the trademark assignment contract and indicated which part of the trademark is owned by which co-owners.

6. Is there a need to appoint a domestic professional representative?

No. It is possible but not mandatory to be represented by a domestic professional representative.
This representative can be anyone. In which case it is mandatory to provide a power of attorney unless your representative is an industrial property attorney or a lawyer.

7. Which official fees (if any) arise from recording a trademark assignment?

For the standard procedure: the fee is 27€ per trademark concerned (between 1 and 10 trademarks) and for 10 trademarks and more: flat fee of 270€ provided the trademarks are included in the same application.
For the fast-track procedure: same fees with a supplement of 52€ per trademark.

Trademark: Licensing

8. Which forms of licensing trademarks exist and which ones must be recorded in the trademark register to become effective (if any)? 

There are exclusive or non-exclusive trademark licenses that may cover all or part of the trademark(s) concerned.
It is not mandatory to record any type of trademark license contract in the National Trademark Register. 

It however recommended for the licensee to be registered, particularly if it wants to take action in case of infringement of the licensed trademark.

9. Which formalities must be met to record a trademark licence? Which supporting documents are required?

The request for registration of a trademark license contract can be made online on the website of the National Trademark Office (INPI) or by post to the National Trademark Office’s address (INPI). 

There are two procedures: a standard procedure that allows for registration in a few weeks and a fast-track procedure that is processed in a few days, if the request is regular.

9.1 Are original supporting documents essential or are copies sufficient? 

It is not mandatory to provide an original of the license contract, a copy of the license contract signed by all contracting parties is sufficient.

9.2 Are there any legalization and/or notarization and/or translation requirements?

No legalization and/or notarization required. If the document is in a foreign language, you must attach a translation. There is no specific submission requirement for the translation.

9.3 Is there a must to use a specific form?

Yes, there is a specific form to fulfil provided by the National Trademark Office (INPI).

If you do not wish to disclose certain information of the license contract, you have the option of providing only an extract of the document. But the extract must absolutely show certain information such as the identity of the parties (surnames, first names or legal form, full address), signatures, the type of deed (at least the article indicating that it is license), the identification of the title/trademark concerned (its number).

After the request of registration is made, the summary of the request of registration with a number and the date of registration is immediately accessible from the National Trademark Office (INPI)’s registration portal online, as well as all the documents of the procedure. Approximately 4 to 6 weeks after the registration (for the standard procedure), the registration is published in the Official Bulletin of Industrial Property (BOPI) in order to make it public (to third parties).

The record of the trademark license contract has only a declarative effect. 

Recording the license is highly recommended if the licensee wants to take action on the basis of the licensed trademark (and required if the licensee wants to act without the trademark owner). Recording the license will also impact the possibility for the licensee to claim for damages in case of infringement. 

11. Are there specific formalities in case a trademark is only partially licenced? 

No. It only needs to be specified in the trademark license contract and indicated which part of the trademark (which products and services) is licensed to the licensee(s) and for which territory.

12. Is there a need to appoint a domestic professional representative?

No. It is possible but not mandatory to be represented by a domestic professional representative.

This representative can be anyone. In which case it is mandatory to provide a power of attorney unless your representative is an industrial property attorney or a lawyer.

13. Which official fees (if any) arise from recording a trademark license?

For the standard procedure: the fee is 27€ per trademark concerned (between 1 and 10 trademarks) and for 10 trademarks and more: flat fee of 270€ provided the trademarks are included in the same application.

For the fast-track procedure: same fees with a supplement of 52€ per trademark.

Trademark: Pledge

14. It is possible to pledge a trademark? If yes, is it required to record such pledge in the trademark register?

Yes, it is possible to pledge a trademark as provided by Article L. 714-1 IPC. The trademark pledge must be established in writing, failing which it is void. 

But it is not mandatory to record such pledge in the National Trademark Register.
It is the same procedure of recording than for the trademark assignment contract and the trademark license contract (see above).

Portrait of Jean-Baptiste Thiénot
Jean-Baptiste Thiénot
Counsel
Paris
Portrait of Clara Feragus
Clara Feragus