FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property Even though arbitration, mediation and concili- ation are available, these ADR techniques are rarely used in France. Typically, the recourse to arbitration must be agreed on a contractual basis and is unavailable for matters that are governed by public order. Contractual disputes, as well as ownership- related issues, can be submitted to arbitration. In contrast, issues of a patent’s invalidity are part of the exclusive jurisdiction of the Paris Court of First Instance (Article L.615-17, IPC). There- fore, if an arbitrator holds a patent invalid, such a decision shall have effect only between the parties (Articles 2059 et seq, French Civil Code). Mediation is also possible. A mediator can be appointed and shall consult with the parties and the lawyers on a confidential basis and help them to find an amicable solution. The proceedings – stayed during this period – can be resumed if the parties fail to settle. Another possible solution for negotiating an amicable settlement is to ask for a conciliation. These are handled, free of charge, by judges themselves and the parties remain free to accept the solution offered by the judges. Article 35 of the UPCA provides for the estab- lishment of a mediation and arbitration centre with its seats in Lisbon and Ljubljana. The centre is expected to open in 2025, but no date has been confirmed. Once open, at any time during the proceedings, the parties will be able to access the services of
the mediation and arbitration centre in order to settle the case. The centre will provide facilities for mediation and arbitration of patent disputes falling within the scope of the UPCA. Settlement reached through the use of the facilities of the centre will be enforceable in any contracting member state. However, a patent may not be revoked or limited in mediation or arbitration proceedings. 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights The assignment of a patent application or pat- ent must be in writing and registered with the INPI in order to be enforceable against third par- ties (Articles L.613-8 and L.613-9, IPC). Where a French and European patent cover the same invention, separate assignments are strictly pro- hibited. According to Article 3 of the Regulation (EU) No 1257/2012, unitary patents may be transferred only in respect of all the participating member states. Transfers must be recorded in the Reg- ister for unitary patent protection. Once regis- tered, the assignment is enforceable against third parties. 10.2 Procedure for Assigning an Intellectual Property Right The parties may draft a non-disclosure agree- ment beforehand in order to ensure the confi- dentiality of the negotiations. General rules of contract law govern patent assignment.
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