Insights – Intellectual Property – January 2022
Employer’s automatic IP ownership rule extended to inventions and software created by non-employee contributors (trainees) – Ordinance no. 2021-1658 of December 15, 2021
Under French intellectual property law, inventors and authors typically own the intellectual property rights to their inventions and creative works.
The only exceptions to that rule were software and inventions created by employees or civil servants. In these cases, the employer automatically owned the intellectual property rights to any invention an employee made in the course of a creative task pursuant to a contract of employment, or to any software an employee created in the course of his or her duties or at the direction of the employer.
Therefore, this automatic IP ownership rule did not apply to any non-employee contributors to the creative work or invention, such as trainees, foreign doctorate students, professors or directors emeriti.
Ordinance no. 2021-1658 of December 15, 2021 was issued specifically to remedy this difference in treatment and to clarify the issue for the courts, providing legal certainty as to the rights of research contributors.
As a result, two new articles were introduced into the Intellectual Property Code: Article L. 113-9-1, which applies to software, and Article L. 611-7-1, to inventions.
Article L. 113-9-1 provides that public or private sector organizations automatically own any software created by non-employee contributors to their research activities, if:
- The contributor was working under a contract with, and under the supervision of, the organization in question;
- The contributor created the software in the course of his or her duties or at the direction of the organization, for which the contributor received cash payments (e.g., an allowance) or in-kind compensation.
Likewise, Article L. 611-7-1 provides that public or private sector research organizations automatically own any invention created by non-employee inventors, if:
- The inventor was working under a contract with the organization;
- The invention was made in the course of the normal creative duties assigned to the inventor, or as part of studies or research work specifically assigned to the inventor;
These two articles pose another issue: the new Article L. 113-9-1 applies solely to non-employee contributors who receive some form of compensation, whereas Article L. 611-7-1 applies to all non-employee inventors, whether compensated or not. That is not to say that non-employee inventors are not compensated at all. In fact, they are entitled to a bonus award for their invention, in the form of a cash payment or a “fair share” (in the case of an invention made outside the course of their normal duties and which the employer may claim as its own).
Therefore, there is no longer a difference in treatment between an organization’s employees and the non-employee contributors to its research activities: any invention or software created in the course of their assigned duties and tasks belongs to the organization.