Key contact: Pascal-André Gérinier (Lawyer - Founder)
An invention is only as valuable as the rights that protect it and the contracts that govern it. MOSAIK secures the creation, circulation and defence of innovations, working in tandem with a partner patent attorney (conseil en propriété industrielle), who handles the drafting and filing of patents.
MOSAIK coordinates legal and technical support with its partner patent attorney. The latter carries out prior art searches, analyses the technical aspects and handles the drafting and filing of patent applications. MOSAIK advises on protection strategy, contracts, transactions and disputes. Industrial SMEs, start-ups, laboratories and inventors thus have a single point of contact and a consistent approach, from protecting the invention to exploiting and defending it.
Who owns the invention?
Where the inventor is an employee, the French Intellectual Property Code allocates rights according to the nature of their duties (Article L. 611-7). An invention made in the course of an inventive assignment or research explicitly entrusted to the employee belongs to the employer, with the employee receiving additional remuneration. An invention made outside those duties, but in the company's field or using its resources, belongs to the employee, although the employer may have it assigned to itself for a fair price. Any agreement between them concerning the invention must be recorded in writing, failing which it is void.
An invention may also result from the work of a non-employee founder, a consultant, a service provider, an intern or a public or private research partner. The company does not automatically become its owner merely because it funds or organises the work. It is therefore essential to put in place, before the work begins, assignment of rights and confidentiality clauses tailored to each contributor. In a joint project, a consortium or collaboration agreement should specify any co-ownership of the results and the terms on which they may be exploited.
Licences, assignments and technology transfer
A patent or patent application may be assigned or licensed, exclusively or not, in whole or in part. The deed must be in writing, failing which it is void (Article L. 613-8), and is enforceable against third parties only once it has been entered in the National Patent Register kept by INPI (Article L. 613-9). A neglected formality can thus deprive the assignee of its rights against a third party.
A patent licence agreement should, in particular, specify the following:
- the scope of the rights granted, identifying the patents and applications concerned, the associated know-how and the authorised fields of use;
- whether or not the licence is exclusive, its territorial limits and any restrictions applying to certain markets or customers;
- how royalties are calculated and paid, any minimum royalties and the audit rights allowing the licensee's statements to be verified;
- the treatment of technical improvements, ownership of new patent applications and the conditions under which each party may exploit them;
- the warranties given by the patent holder, the licensee's obligations and the allocation of liability in the event of a claim or dispute;
- the term of the agreement, the grounds for and effects of its termination, and what becomes of the licence if the patent expires or is revoked.
Innovation is not just about patents. Know-how, processes and technical data that a company chooses not to patent are protected as trade secrets, provided it has taken reasonable protective measures. Before any discussion with a partner, investor or subcontractor, the firm puts in place the non-disclosure agreement and access rules that will make it possible, when the time comes, to enforce that secret.
Leveraging innovation in transactions
In a fundraising or an acquisition, MOSAIK carries out an intellectual property legal due diligence: chain of title, inventions by founders and employees, inbound and outbound licences, pending or potential disputes. The firm also assists with contributions and assignments of patents to a company, the legal valuation of intangible assets and the negotiation of the warranties provided for in sale agreements. This work is carried out jointly with the MOSAIK teams in charge of fundraising and mergers and acquisitions.
Infringement, validity and entitlement
Patent litigation follows its own rules. Actions relating to patents for inventions, including where they also concern a related question of unfair competition, fall within the exclusive jurisdiction of the Paris Judicial Court (tribunal judiciaire de Paris) (Article L. 615-17 of the French Intellectual Property Code and Article D. 211-6 of the French Code of Judicial Organisation). European patents with unitary effect, for their part, fall within the jurisdiction of the Unified Patent Court, which has a local division in Paris. An infringement action is time-barred five years from the day on which the patent holder knew or should have known of the last fact enabling it to bring the action (Article L. 615-8).
In litigation, the partner patent attorney examines the scope of the claims, the validity of the patent and the technical aspects of the infringement. MOSAIK defines the strategy, arranges, where relevant, a court-authorised infringement seizure (saisie-contrefaçon), brings interim or substantive proceedings and, where appropriate, negotiates a licence or a settlement. In defence, the firm may challenge the validity of the patent, demonstrate the absence of infringement and, ahead of a launch, help secure freedom to operate.
Protecting innovation internationally
A patent only provides protection in the territory for which it was granted. A company that manufactures in Asia, exports to Latin America or negotiates with a foreign partner must therefore decide on its filing strategy country by country, before any disclosure. With its offices in Hong Kong and Mexico City and its network of correspondents, MOSAIK coordinates the protection, contracts and defence of its clients' innovations in these regions.
Frequently asked questions
Can a lawyer file my patent?
Drafting a patent application is technical work: the description of the invention and the drafting of the claims determine the scope of protection. MOSAIK entrusts this task to the firm's partner patent attorney, and handles contracts, strategy and litigation, so that the client has a single point of contact.
My employee has made an invention: who owns it?
It depends on their duties. A service invention (invention de mission), arising from an inventive assignment or from research explicitly entrusted to the employee, belongs to the employer, with additional remuneration. A non-service invention (invention hors mission), made in the company's field or using its resources, belongs to the employee, but the employer may have it assigned to itself for a fair price. Other inventions remain the employee's. The employee must declare the invention to the employer.
Which court should hear a patent infringement case?
The Paris Judicial Court, which alone has jurisdiction in France over actions relating to patents for inventions, including where the claim also concerns related acts of unfair competition. For a European patent with unitary effect, or a classic European patent that has not been opted out of its jurisdiction, the case may be brought before the Unified Patent Court.
Does a patent licence agreement need to be registered?
A patent licence agreement must be in writing, failing which it is void. To be enforceable against third parties, it must be entered in the National Patent Register kept by INPI, the French industrial property office; before registration, it is enforceable only against third parties who acquired rights with knowledge of the agreement. Even without registration, the licensee may join the infringement action brought by the patent holder to seek compensation for its own loss. Registration is therefore recommended as soon as the agreement is signed.