French reform of the automatic transfer of intellectual property for non-salaried staff | K&L Gates LLP



France is widely known for its author-centered intellectual property (IPR) framework: with the exception of a limited number of very specific situations, all IPRs must be expressly assigned and there is no of “work for pay” doctrine.

This situation is changing, following decree no.2021-1658 of December 15, 2021, reproducing the regime applicable to inventions and software created by employees or public officials to those produced by natural persons hosted by private or public law entities carrying out research.

This decree amended the Intellectual Property Code (FIPC), by creating two new articles: L.113-9-1 (with regard to software IPRs) and L.611-7-1 (with regard to DPI patents) FIPC.

The actors concerned

“Accommodated” workers – The authors concerned

The authors referred to in the decree are natural persons who are not referred to in articles L.113-9 and L.611-7 FIPC, that is to say not salaried, but which would be “hosted” within the framework of an agreement, by a private or public legal person carrying out research.

The preliminary Report to the President of the Republic indicated that this category of “hosted staff” should be interpreted as including “interns, foreign doctoral students and emeritus professors or directors”.

Although this is not explicitly stated, it can also be logically deduced from:

  • Include other non-salaried personnel such as persons performing voluntary international service in companies because, in this situation, there is an agreement between the person and the host legal person (article L.122-7 of the French National Service Code).
  • Exclude the case of independent consultants who would work for a company. In this case, as long as there is an advisory agreement, no actual development within the meaning of the decree would be provided for.
The Affected Beneficiary

Any legal person governed by private or public law “carrying out research activities” would benefit from the assignment of intellectual property rights. These terms, which are rather imprecise, could be interpreted as designating any academic, theoretical or applied research, or even any structure endowed with an R&D center to which the hosted worker would be assigned.

A new automatic statutory transfer of IPRs

Software

Following the new article L.113-9-1 FIPC, the authors of the software must be (i) placed under the responsibility of the host legal person and (ii) receive remuneration (eg: internship allowance).

According to Reporting, the counterpart can be financial or material.

Without this compensation, the host entity will not be able to benefit from the new framework and the author will remain the owner of the underlying IPR.

patentable works

The three pre-existing categories of inventions under Article L.611-7 FIPC (detailed below) have been transposed to this new regime by virtue of article L.611-7-1 FIPC.

Missionary works

Continuation of the article L.611-7, 1 ° FIPC, mission work (ie invention created in execution (i) of a contract comprising an inventive mission or (ii) studies and research specifically entrusted to the worker) belong ab initio to the host entity.

However, the inventor remains entitled to receive additional compensation.

Preemptive work outside the mission

Continuation of the article L.611-7, 1 ° FIPC, inventions resulting from the accomplishment of missions and activities within the host entity by the hosted worker are qualified as “non-preemptive mission” inventions.

These are mainly inventions generated as part of the activities of the hosted worker and:

  • During the performance;
  • During mission / activity hours;
  • On the premises of the hosting entity; Where
  • With the material, organizational or IT resources provided by the host entity.

In the case of preemptive inventions without a mission, the article L.611-7, 2 ° FIPC: gives mandate to the host entity of a pre-emptive right which, if it were exercised, would make this entity the ab initio owner of the non-mission preemptive works, subject to the author’s compensation for transfer of ownership of works. Regarding such remuneration, the only indication to date, as for the pre-existing employee plan, is that it must be a “fair price”, which may be specific in future regulations.

Non-preemptive non-mission work

All other works, commonly known as “non-mission non-preemptive” inventions, belong to their inventors, who remain free to use, patent or assign as they see fit.

Dispute resolution mechanisms

With regard to software under Article L.113-9-1 FIPC, the decree provides that any dispute is brought before the court of the head office of the host entity.

In matters of inventions, any dispute relating to compensation or classification is brought before the conciliation commission mentioned in article L.615-21 FIPC or, in the absence of such mediation, before the competent court.


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