Let’s clarify … Who owns the IP rights to software or inventions made by non-employees (including trainees) accomodated by private or public entities carrying out research
6 January 2022
The French Ordinance of December 15, 2021 clarifies the legal framework for the assignment of IP rights to inventions and software created by non-employees (in particular by trainees) by mirroring the regime applicable to inventions and software created by employees or public servants to those made by natural persons accommodated by private or public law entities “carrying out research activities”.
The personae materiae scope of the new regime. The authors referred to in the Ordinance are the natural persons who are not referred to in articles L.113-9 and L.611-7 of the French Intellectual Property Code, i.e. non-employees or public servants, but natural persons who would be “accommodated” within the framework of an agreement, by a private or public legal entity “carrying out research activities”. According to the preliminary Report to the President of the Republic, this category of “accommodated personnel” should include “trainees, foreign doctoral students and emeritus professors or directors.”
The rationae materiae scope of the new regime. The regime is applicable to inventions and software but does not concern other creations protected by copyright or by design rights.
- Further to the new article L.113-9-1 of the French IP Code, the IP rights on the software created by the authors referred to in the Ordinance “in the execution of their missions or according to the instructions of the accommodating entity” are assigned to the said accommodating legal entity. However, two conditions must be met: the software authors should be (i) placed under the responsibility of the accommodating legal entity and (ii) receive a compensation.
- As regards inventions, the three pre-existing categories of inventions under article L.611-7 of the French IP Code have been transposed to this new regime. In essence, further to the new article L.611-7-1 of the IP Code (except where more favorable provisions are applicable):
- If the invention is created in the execution of (i) an agreement including an inventive mission or (ii) studies and research specifically entrusted to the worker (“inventions under missions”), the accommodating entity is the owner of the invention and the accommodating entity must pay an “additional remuneration”;
- As regards the “inventions outside mission”, the worker is deemed the owner of the invention. However, on payment of a fair price, the accommodating entity can claim ownership of inventions outside mission when those inventions have been created by the natural person:
- in the execution of its missions and activities;
- or in the field of the activities entrusted by this legal entity;
- or by knowledge or with materials, equipment or tools belonging to the accommodating entity, or with data provided by the accommodating entity.
A decree will specify the conditions of application of this new article, in particular the conditions governing the financial compensation.
Dispute resolution mechanisms. With respect to software, any dispute is to be brought before the court where the accommodating entity has its registered office (article L.113-9-1 of the French IP Code).
With respect to inventions, any dispute relating to the compensation or the classification is to be brought before the conciliation commission referred to in article L.615-21 of the French IP Code or, failing such mediation remediation, before the competent court.