Patent Co-Ownership Agreement

A patent co-ownership agreement is a contract entered into by multiple holders of the same patent to govern the exercise of their rights over the protected invention. In the absence of such an agreement, the default co-ownership rules set forth in the French Intellectual Property Code (CPI) apply.

This agreement typically defines:

• The conditions for the exploitation of the patent by each co-owner,

• The distribution of costs related to patent maintenance (annuities, procedures, etc.),

• The rules governing the transfer or licensing of the patent,

• The management of infringement actions.

The objective of the agreement is to ensure smooth management of co-owners’ rights and prevent disputes related to the patent’s exploitation.

Legal Framework in French Law

Patent co-ownership is governed by several provisions of the French Intellectual Property Code (CPI), including:

• Article L. 613-29 CPI: States that rights related to a patent jointly owned by multiple parties are subject to co-ownership rules.

• Article L. 613-30 CPI: Specifies that each co-owner may exploit the patented invention without the consent of others unless otherwise agreed.

• Article L. 613-31 CPI: Regulates the transfer of undivided shares in a co-owned patent and grants preemptive rights to other co-owners.

• Article L. 613-32 CPI: Establishes rules for granting licenses over a co-owned patent, generally requiring the unanimous consent of all co-owners unless otherwise specified.

Key Provisions of a Patent Co-Ownership Agreement

To ensure effective management of rights, the agreement should address:

• Exploitation rules: Who can use the patent, and under what conditions?

• Cost-sharing: How will maintenance and enforcement expenses be divided?

• Transfer and licensing terms: Can a co-owner sell their share or grant a license without consent?

• Infringement actions: Who can initiate legal proceedings, and how will any damages be distributed?

• Duration and termination: Exit conditions and conflict resolution clauses.

Difference from Other Agreements

Unlike a patent assignment, where a patent holder permanently transfers their rights to a third party, co-ownership involves collective management of the patent. Similarly, unlike a licensing agreement, where a patent holder grants limited exploitation rights to a third party, a co-ownership agreement concerns the distribution of ownership rights among multiple parties.