FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
10.4 Procedure for Licensing an Intellectual Property Right
For the assignment to be lawful: • the assignor must have the right to assign such rights; • the assigned rights must be in force; • the price must be fixed or, at least, determi- nable; and • the duration of the contract must be speci- fied. The assignment, although effective between the parties upon its signature, must be registered to be enforceable against third parties. Regarding the assignment of unitary patents, if the document establishing the transfer is not in one of the EPO’s three official languages, the EPO may require a certified translation into one of those languages. 10.3 Requirements or Restrictions to License an Intellectual Property Right A licence agreement must be in writing to be val- id (Article L.613-8, IPC). Aside from this restric- tion, parties are generally free to determine the licence terms, including the exclusivity and the duration of the licence, the royalty rate and the conditions of exploitation. To be enforceable against third parties, the licence must be regis- tered with the relevant office. French and European antitrust authorities are rigorous with respect to patent licences or tech- nology transfer agreements, particularly those within the pharmaceutical sector. Unlike assignments, licences relating to a unitary patent may be for the whole or part of the terri- tory. They must be recorded in the Register for unitary patent protection in the same way as for assignments.
The licensee must have the right to license such rights, the contract must have a valid object, the price must be fixed or determinable, and the duration of the contract must be specified. The licence agreement must precisely define its scope. Essential elements that must be provided in the agreement include: • the identification of the patent; • whether the licence is granted exclusively or not (ie, preserving the possibility for the pat- entee to exploit the invention itself); • the duration; • the territory at stake; and • the calculation of the royalties. Regarding the licensing of unitary patents, if the document is not in one of the EPO’s three offi- cial languages, the EPO may require a certified translation into one of those languages.
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