A patent assignment agreement is a contract through which the holder of a patent permanently transfers their industrial property rights to a third party. This agreement entails the full transfer of ownership of the patent, including the rights of exploitation, use, and royalties, unless otherwise stipulated in the contract. The assignment may concern a granted patent, a pending patent application, or even a portion of the rights attached to the patent.
For validity, a patent assignment agreement must comply with specific formalities, notably being in writing and registered with the French National Institute of Industrial Property (INPI) to be enforceable against third parties.
The patent assignment agreement is primarily governed by:
Article L. 613-8 of the French Intellectual Property Code (CPI):
“The rights attached to a patent application or a granted patent may be transferred in whole or in part. They may be subject, in whole or in part, to exclusive or non-exclusive licenses of exploitation.”
Article L. 613-9 of the CPI:
“Any acts transferring or modifying the rights attached to a patent application or a granted patent must, to be enforceable against third parties, be registered in the National Patent Register maintained by the French National Institute of Industrial Property.”
Article R. 613-53 of the CPI:
This article sets out the registration requirements with the INPI.
To be legally valid, a patent assignment agreement must meet the following conditions:
Written form: A written contract is mandatory to prevent nullity.
Determined object: The patent concerned must be precisely identified.
Mutual consent: The agreement must be concluded without any defect of consent (error, fraud, coercion).
Price and payment terms: The assignment can be either free or paid, with a lump-sum payment or installment payments.
Enforceability against third parties: Registration with the National Patent Register is essential.
Once the agreement is signed and registered with the INPI:
The assignor loses all rights to the patent unless otherwise stipulated.
The assignee becomes the exclusive owner, with the ability to exploit, license, or resell the patent.
The patent remains subject to legal obligations, including the payment of annuities for its maintenance.
Unlike a patent license, where the holder retains ownership while granting exploitation rights to a third party, a patent assignment involves the total and definitive transfer of patent ownership.
To be enforceable against third parties, the assignment must be registered in the National Patent Register through a declaration to the INPI, accompanied by:
A registration request signed by both parties.
A copy of the signed assignment agreement.
Payment of registration fees.
The patent assignment agreement is a key legal operation in industrial property, allowing for the monetization of a patent or its transfer as part of an acquisition or strategic partnership. Special attention must be given to drafting the contract and fulfilling administrative formalities to ensure its validity and enforceability against third parties.
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