Employee Inventions

Contents

Chapter 1. Historical review of the scheme of employees' inventions

Chapter 2. Belonging to Inventions

Section 2.1. The principle of belonging to inventions

Section 2.2. The special scheme for employees

2.2.1. Mission Inventions

2.2.2. Attributable non-mission inventions

2.2.3. Non-attributable non-mission inventions

Section 2.3. The inventors concerned

2.3.1. Condition # 1: Inventors

2.3.2. Condition # 2: Employees

Section 2.4. Formalism to be respected by the employee to declare an invention

2.4.1. Duty of the employee

2.4.2. Employer's agreement

2.4.3. Disagreement

2.4.4. Consequence of a failure to this formalism

1) For the employee

2) For the invention

Chapter 3. Employee-employer relations

Section 3.1. Employee information

Section 3.2. Tensions because of a dismissal?

Chapter 4. Additional remuneration / payment of a fair price

Section 4.1. Applicable law

Section 4.2. Generating event

Section 4.3. The different compensation schemes

4.3.1. Case of mission inventions

1) Inventions before 1990

2) Inventions after 1990

4.3.2. Case of attributable off-duty inventions

4.3.3. Case of non-assignable non-mission inventions

Section 4.4. Prescription

4.4.1. Duration of prescription

4.4.2. The starting point of the prescription

Chapter 5. Method of calculating the additional remuneration

Section 5.1. Usual compensation system

Section 5.2. Optional preliminary procedure: CNIS

Section 5.3. Calculation method used by the judicial court

5.3.1. Premium patent / operating premium

5.3.2. Average amounts

5.3.3. Method: Alignment with the civil service regime?

5.3.4. Request for additional documents

Chapter 6. Focus on the applicable law

See the latest changes

Chapter 1. Historical review of the scheme of employees' inventions

With the law of 2 January 1968 (Law No. 68-1 tending to value inventive step and to amend the patent scheme for patents), there were no specific provisions concerning employees' inventions (although provisions existed in the travaux préparatoires but were withdrawn at the time of the vote).

For a long time, therefore, the judge "created" the law in order to deal with this complex subject.

At the time, a Praetorian regime distinguished service inventions "(Which belonged jointly to the employer AND to the employee) and the other inventions (which belonged exclusively to the employee).

In 1978, the law sanctioned this Praetorian regime (roughly speaking), a law that is now codified in Article L611-7 of the Intellectual Property Code.

Finally, additional remuneration has been made compulsory (by the law of November 26, 1990) for "mission inventions" (a notion that we will define a little further ... be patient, I get there!).

Chapter 2. Belonging to Inventions

Section 2.1. The principle of belonging to inventions

Article L611-6 CPI provides that the right to the patent belongs to theinventor or to his successor : we might think that the invention of an employee belongs to him.

Nevertheless, and under certain conditions, the employer can become the successor of the employee.

Section 2.2. The special scheme for employees

According to the article L611-7 CPIwe must distinguish between three categories of invention for employees.

2.2.1. Mission Inventions

Inventions are described as mission inventions when they are made (L611-7 CPI, point 1):

This last case is often more complex to prove, because the prescription of inventing made to the employee is late (for example, during a mission) and the proofs are more difficult to collect.

Here, we are right in the heart of the contract of employment: the prescription to invent is made directly by the employer to one of his employees.

In this situation, the title right belongs to the employer (L611-7 CPIpoint 1).

This right is automatically assigned to the employer, by law, without any action on his part.

2.2.2. Attributable non-mission inventions

It is necessary here that the inventions are not of the first category and that they are realized (L611-7 CPI, point 2):

  • in the execution of the employee's duties,
  • in the field of activity of the company,
  • either by the knowledge or the use of the specific means of the company (the term "specific" of the article L611-7 CPIpoint 2 seems to preclude an employer from claiming an invention if the employee used a company pen to write ...).

Here, we are on the periphery of the contract of employment: indeed, there is no prescription from the employer to invent, but it turns out that his employee invents something.

In this situation, the employer can claim the right of attribution of the invention, but this attribution is not automatic: it is necessary that the employer makes the request explicitly (L611-7 CPI, point 2 together R611-7 CPI) in a delay of 4 months from receipt of the invention by the employee (see formalism below).

2.2.3. Non-attributable non-mission inventions

The inventions concerned by this category are all other inventions, not concerned by the above categories (L611-7 CPI, point 2, first sentence).

In this situation, the title right belongs to the inventor, quite simply.

Section 2.3. The inventors concerned

2.3.1. Condition # 1: Inventors

An inventor is one who designs, imagines, and realizes the invention.

Therefore, the person who simply gives the technical problem to solve (ie who sets the goal to achieve) is not inventor. The same goes for someone who simply performs experiments.

In practice this can be difficult but facts can help (writing laboratory notebook, interaction with the IP firm for the drafting of the patent, imprecise instructions given by his hierarchy, C. Cass. com., February 12, 2013, No. 12-12898).

2.3.2. Condition # 2: Employees

The inventors concerned are the salaried inventors, ie those who have a contract of employment of French law (possibly not written) at the date of the invention (C. Cass. Company, June 2, 2010, No. 08-70138) and which are subject to a hierarchical prescription in return for a salary.

Are thus excluded:

Section 2.4. Formalism to be respected by the employee to declare an invention

2.4.1. Duty of the employee

As noted above, the employer has certain rights and must be allowed to exercise them properly.

The employee must inform, immediately (R611-1 CPI), the employer by registered letter with acknowledgment of receipt (or any other means to prove the R611-9 CPI) by providing him with sufficient information to enable the employer to assess the classification of the invention (R611-2 CPI) in one of the three categories of invention that we have just presented.

2.4.2. Employer's agreement

The employer must take advantage of the classification of the invention in the 2 months from the date of receipt by the employer of the declaration of invention (R611-6 CPI). Otherwise, the classification is accepted.

In the event that the employer classifies this invention as an "attributable off-duty invention", it has 2 additional months (ie 4 months from receipt of the letter) to claim the attribution (R611-7 CPI).

2.4.3. Disagreement

Of course, it is quite probable that in practice, the employee and the employer do not agree on the classification of the invention in one of the categories. In the event of disagreement of this type, it is possible to seize the CNIS (conciliation commission known as the "national commission of the inventions of employees" created by the article L615-21 CPI) and in this case the deadlines referred to above are suspended (R611-8 CPI).

2.4.4. Consequence of a failure to this formalism

1) For the employee

If the employee does not comply with this formalism, no penalty is provided by the code.

Damages may nevertheless be sought by the employer in the event of a patent filed by his employee to his detriment.

In any case, this does not constitute a serious misconduct (C. Cass. Company, January 15, 2015, No. 13-14811) that can justify dismissal.

Some have sought in the "non-declaration" of the employee a faulty behavior depriving the employee of any additional remuneration: nevertheless, this fault is not considered so serious as to deprive the inventor of his right to remuneration (Paris District Court, 3rd Division, 4th Sect., January 30, 2014Vincent G. c. ADER Languedoc-Roussillon et al).

2) For the invention

The Court of Cassation adds more (C. Cass. com., December 18, 2007, No. 05-15768) than :

[...] the formalities prescribed by articles L. 611-7, R. 611-1 and following of the code of the intellectual property are not envisaged under penalty of nullity [of the patent].

Presumption of the status of inventor

The inventors mentioned in the patent are presumed to be the good inventors.

Nevertheless, it is a simple presumption that can be reversed by the evidence to the contrary (Paris District Court, 3rd Division, 3rd Sect., May 16, 2014; Jacques V. c. Kadant-Lamort): if an employer has appointed an employee as an inventor, he must produce convincing documents showing the court that the employee was ultimately not a true inventor.

Chapter 3. Employee-employer relations

Section 3.1. Employee information

Since the Macron law of August 6, 2015, the employee should be informed (L611-7 CPI, 1 °):

  • any filing of an application for intellectual property title;
  • any issue of an intellectual property title.

Section 3.2. Tensions because of a dismissal?

If employee-employer conflicts often arise during the resignation / dismissal / retirement of the employee, they may occur during the period of execution of the employment contract.

In this case, it should be clearly stated that an employee's legal claim (even if it seeks to stop a production line and thus indirectly harm the employer) can not constitute a legitimate reason. dismissal (C. Cass. soc. September 17, 2014, No. 13-15930), unless the demands of the employee are abusive.

Chapter 4. Additional remuneration / payment of a fair price

Section 4.1. Applicable law

One of the problems here is a problem of law enforcement over time.

For example, imagine that an invention is made before the 1990 law, but that the filing of the patent is made after the same law. Which law to apply?

For the Court of Cassation, it is on the day of the realization of the invention that one must place oneself to evaluate the applicable regime and not the date of grant of the patent (C. Cass. civ., September 20, 2011, n ° 10-20997).

This satisfactory solution from an intellectual point of view can nevertheless pose a problem for the proof. Like knowing the exact date of realization of the invention? It will then look in the mail exchanges, work meetings, etc.

Section 4.2. Generating event

It is therefore important to know when the additional pay provided by law is due:

  • At the time of the invention?
  • At the time of filing the patent?
  • At the time of exploitation of the invention / patent?
  • At the time of the grant of the patent?

Judges consider that the inventions referred to in Article L611-7 of the IPC are the inventions patentablewhether a patent is filed or not, whether an operation is carried out or not (C. Cass. com., December 18, 1984, No. 83-11677, or C. Cass. Civ. c. com., September 20, 2011, No. 10-20997).

Section 4.3. The different compensation schemes

4.3.1. Case of mission inventions

The law provides for a " additional remuneration In the context of mission inventions (L611-7 CPI, 1 °).

There is no definition of this expression in the texts and it is necessary to search the case law to form an opinion.

1) Inventions before 1990

Before 1990, there was no law imposing additional remuneration.

We must therefore look at collective agreements:

2) Inventions after 1990

Since 1990, additional gratuity is not an option. It is obligatory and must be provided for (L611-7 CPI):

  • by collective agreements,
  • company agreements and / or
  • individual work contracts.

It should be noted that many collective agreements still do not provide for this remuneration in a systematic way and that the employment contracts are often silent on this point.

If the collective agreement gives certain conditions to this remuneration, the article in question of the collective agreement must be considered unwritten (C. Cass. com., February 22, 2005 No. 03-11027, or C. Cass. com., February 12, 2013, No. 12-12898), not important patent has not been filed or issued.

The judge will then feel free to determine as he sees fit the additional remuneration (often in a favorable way to the employee, see the section " Method of calculating the additional remuneration").

4.3.2. Case of attributable off-duty inventions

For non-assignable inventions (L611-7 CPI, 2 °), a "fair price" must be paid to the employee.

This fair price must be fixed according to the initial contribution of the various parties and the industrial and commercial utility of the invention (Court of Appeal of Colmar, 2nd c. Civ. sect. A, of 9 January 2013Case SNCF and L611-7 CPI, 2 °).

4.3.3. Case of non-assignable non-mission inventions

In the latter case, the invention remains the property of the inventor, no remuneration is due to the employee in this respect.

Section 4.4. Prescription

4.4.1. Duration of prescription

Most judges consider the additional pay as a wage claim (C. Cass. com., June 12, 2012, No. 11-21990 or C. Cass. com, January 26, 2012, No. 10-13825).

The limitation period of this type of claim is:

4.4.2. The starting point of the prescription

Does the prescription run from:

  • From the birth of the claim (ie the invention)?
  • Of the knowledge of the exploitation of the invention by the employee and from the moment when the claim would be determinable?

In the light of the case-law on the subject (and the new wording of L3245-1 of the Labor Code), it seems that proponents of the beginning of the limitation period the day the claim is determinable carry it (C. Cass. Company, May 5, 2004, No. 02-13318, C. Cass. com., February 22, 2005, No. 03-11027, C. Cass. Company, January 26, 2012, No. 10-13825, C. Cass. com., June 12, 2012, No. 11-21990).

Chapter 5. Method of calculating the additional remuneration

Section 5.1. Usual compensation system

Today, many companies provide additional compensation.

A 2016 INPI study gives interesting indicators to understand the methods of calculating this remuneration (Compensation of Inventions of Employees - Practices in force in France - Analyzes of the Observatory of Intellectual Property - October 2016).

Here are three graphs that speak for themselves:

Time of additional remuneration
Time of additional remuneration
Type of additional remuneration
Type of additional remuneration
Amount of additional remuneration
Amount of additional remuneration

Section 5.2. Optional preliminary procedure: CNIS

If the employee feels wronged (ie he has received nothing or not enough according to him), he can choose freely (Court of Appeal of Lyon, 1st c. civ., sect. A, September 27, 2012) to seize the CNIS or the TGI of Paris.

If the CNIS is seized, the employee will have a period of one month from the proposal of the latter to seize the TGI (L615-21 CPI). Otherwise, the proposal of the CNIS will be worth final agreement between the parties.

Section 5.3. Calculation method used by the judicial court

If it is not possible to summarize CNIS's proposals (they are secret), we will summarize the decisions of the judicial judges as to the methods for calculating this additional remuneration.

5.3.1. Premium patent / operating premium

The methods used can be very variable, used cumulatively or alternatively depending on the case:

  • determination of a "fixed price" for the invention (ie often called " patent premium");
  • determining a premium based on the commercial success of the invention and its exploitation (ie often called operating premium").

5.3.2. Average amounts

By way of illustration, judges may allocate a patent premium "(Ie which applies even if the invention is not exploited):

Similarly, judges may allocate, under the operating premium »:

It should be noted that the differences between these amounts can be explained in part by the economic interest and the commercial success of the invention (it is therefore necessary to analyze the situation according to the particular case).

This " operating premium Is not systematically provided for by collective agreements, but even in the absence of a collective agreement, some decisions still allocate it.

5.3.3. Method: Alignment with the civil service regime?

It should also be noted that some judges have sought to align the supplementary remuneration with the regime applicable to State agents of the article. R611-14-1 CPI (Paris District Court, 3rd c. 1st Sect., November 10, 2008).

This method was explicitly rejected in another case by the Court of Appeal of Paris, Pole 5, 2nd ch. December 16, 2011.

5.3.4. Request for additional documents

In any case, the pre-trial judge may ask the employer for a large number of documents (Paris District Court, 3rd Chamber, 4th Sect., Judge of the Pre-Trial Judgment, 15 May 2014), possibly under penalty

  • content of each patent family for each invention;
  • lists of third parties directly or indirectly holding a right over an invention or patent from the invention (assignment, license, contribution, pledge, bank guarantee, etc.);
  • copy of each contract (eg, sale, license, supply and contribution agreements), relating to any product covered directly or indirectly (eg by means of means), to any of the claims of a patent;
  • details of all payments received in connection with a patent;
  • documents relating to the valuation of each invention, in particular all documents quantifying its economic value, including:
    • sales volume,
    • the gross margin,
    • the net margin,
    • production savings
    • and their commercial interest.

Chapter 6. Focus on the applicable law

From the beginning we have been talking about the articles of the intellectual property code governing the title right (L611-7 CPI).

But are they really applicable?

It is a difficult problem that falls under private international law.

In Europe, the European regulation n °559/2008 or Rome I (which is based on the Rome Convention) provides in Article 8 that the contract of employment is governed by:

  • by the law chosen by the parties (subject to the more favorable provisions of the other possibilities);
  • by the law of the country presenting the "more connection" with the employment contract;
  • by the law of the country in which the contract usually runs;
  • failing that, by the law of the country of the principal place of business of the company having hired the employee.

It's up to you to determine the applicable law ...

2 Comments:

  1. @ Andrew: The 5-year prescription provided by article 2224 of the Civil Code will apply. The questions will be:

    Is there prescription of the action in payment of the additional remuneration? Since the origin? Since the inventor has all the elements?

    To which acts does the prescription apply elsewhere? At every sale of a product covered by the patent? To profits, to a pro-rata turnover?

    Other questions: Are these patents still in force? Does the employer exploit the purpose of each of these patents? If some are lost / abandoned, the right to remuneration will probably be extinguished.

    A claim (personal right) may be open for the period of validity until the expiry of each respective patent.

    On the question of prescription or not: see the attached link to a recent decision

  2. Hello,
    This article was for me a revelation.
    Since 1997, I have filed more than 12 patents for my employer.
    I have an "inventive mission" clause in my employment contract and I considered until today that I was "paid" for it.
    I did not know that there could be additional remuneration.
    If I seize the CNIS tomorrow, what can I assert concerning patents filed from 1997 to 2007?
    cordially
    Andrew

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