Historical reminder on the regime of employee 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specific provisions concerning employees' inventions (although provisions existed in the travaux préparatoires but were withdrawn at the time of the vote).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 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!).
Ownership of inventions
The principle of ownership of 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.
However, and under certain conditions, the employer can become the successor in title of the employee.
The special scheme for employees
According to the article L611-7 CPIwe must distinguish between three categories of invention for employees.
Inventions are described as mission inventions when they are made (L611-7 CPI, point 1):
- in the performance of an employment contract comprising an inventive assignment (ie general and early employer prescription) which corresponds to the actual assignments of the employee (eg with regard to his job description Paris District Court, Ch. 03, section 03 of 16 October 2001), and or
- in studies or research that are explicitly (but not necessarily in writing) assigned to him (Paris District Court, Ch. 03, Section 03, March 16, 2005).
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 employment contract: the prescription to invent is made directly by the employer to one of his employees.
In this situation, the right to title belongs to employer (L611-7 CPIpoint 1).
This right is automatically assigned to the employer, by law, without any action on his part.
Attributable out-of-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 at the periphery of the employment contract: indeed, there is no prescription from the employer to invent, but it turns out that his employee invented something.
In this situation, the employer can claim the right to attribute the invention, but this attribution is not automatic: the employer must explicitly request it (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).
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.
The inventors concerned
Condition n ° 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).
Condition n ° 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:
- corporate officers, or corporate managers (non-employees);
- trainees (C. Cass. com., April 25, 2006, No. 04-19482) even though they have signed rules of procedure which provide for an automatic transfer of inventions (Council of State, 4th and 5th sub-sections together, of 22 February 2010, No. 320319).
Formality to be observed by the employee to declare an invention
Duty of employee
As indicated above, the employer has certain rights and must be allowed to exercise them correctly.
The employee must inform, immediately (R611-1 CPI), the employer by registered letter with acknowledgment of receipt (or any other means making it possible to prove the dispatch R611-9 CPI) by providing it 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.
The employer must take sides on the classification of the invention in the 2 months from the 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 non-mission invention", he has 2 additional months (ie 4 months from receipt of the letter) to claim the attribution (R611-7 CPI).
Of course, it is quite likely 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 “national commission of inventions of employees” created by the article L615-21 CPI) and in this case the deadlines referred to above are suspended (R611-8 CPI).
Consequence of a breach of this formalism
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 being 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).
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.
- any filing of an application for intellectual property title;
- any issue of an intellectual property title.
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 hypothesis, it is necessary to make the share of things well: a legal claim of the employee (even if it aims to stop a production line and thus indirectly harm the employer) can not constitute a legitimate reason of dismissal (C. Cass. soc. September 17, 2014, No. 13-15930), unless the demands of the employee are abusive.
Additional compensation / payment of a fair price
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.
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).
The different compensation plans
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.
Inventions before 1990
Before 1990, there was no law imposing additional remuneration.
We must therefore look at collective agreements:
- if a collective agreement stated that it was necessary to fix the amount of this remuneration " flat rate taking into account the general research framework in which the invention was placed, the difficulties of practical development, the original personal contribution of the person concerned in the individualisation of the invention itself and the commercial interest of it ", It should be understood that the amount must be a function of the profits and the turnover achieved by the employer and must not be a function of the employee's salary (C. Cass. com., November 21, 2000, No. 98-11900)
- if a collective agreement stated that the employee must be given " a gratuity related to the value of the invention »(Art 17 of the rider Engineer and Framework of the collective agreement of the chemical industries), the remuneration does not have to be based on the salary of the employee (Court of Appeal of Paris, 4th ch., Sect. B of May 13, 2005).
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").
Inventions outside attributable missions
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 °).
Non-attributable 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.
Duration of prescription
The limitation period of this type of claim is:
- of 5 years for inventions made before 18 June 2008 (Article 2277 (old) of the Civil Code);
- of 5 years for inventions made between June 19, 2008 and June 16, 2013 (Article 2224 of the Civil Code);
- of 3 years for inventions made since 17 June 2013 (L3245-1 of the Labor Code).
The starting point for 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 prevail (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).
Method of calculating the additional remuneration
Usual remuneration system
Today, many companies provide additional compensation.
A 2016 INPI study gives interesting indicators to understand the methods of calculating this remuneration (The Remuneration of Employee Inventions - Practices in Force in France - The Intellectual Property Observatory's Analysis - October 2016).
Here are three graphs that speak for themselves:
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.
Method of calculation adopted by the judicial judge
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.
Patent premium / 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").
By way of illustration, judges may allocate a patent premium "(Ie which applies even if the invention is not exploited):
- 1000 € (Court of Appeal of Paris, Pole 5, 2nd chapter, March 11, 2011);
- the expert considers that the usual practice is to 500 € for the deposit, 500 € for a deliverance, 1000 € for an extension (Court of Appeal of Paris, Pole 5, 2nd ch. December 16, 2011);
- 2000 € (Paris District Court, 3rd Chamber, 3rd Sect., 11 January 2013);
- US $ 1,500 (Court of Appeal of Paris, Pole 5, 1st ch., January 30, 2013);
- 1000 € (Court of Appeal of Paris, Pole 5, 2nd chapter, October 25, 2013);
- According to a 2008 INPI survey, the average amount of this lump sum premium is 3000 € for filing an application (Court of Appeal of Paris, Pole 5, 1st ch., September 11, 2013);
Similarly, judges may allocate, under the operating premium »:
- 50000 € for a patent FR, EP and PCT (Court of Appeal of Paris, Pole 5, 1st ch., April 14, 2010);
- of 5000 € at 40000 € by patent (Toulouse Court of Appeal, 2nd Division, 2nd Sect., March 16, 2010);
- of 4000 € at 35000 € by patent (Court of Appeal of Paris, Pole 5, 2nd chapter, March 11, 2011)
- of 5000 € at 10000 € by patent (Court of Appeal of Paris, Pole 5, 1st ch., June 26, 2013);
- of 2000 € at 35000 € by patent (Court of Appeal of Paris, Pole 5, 2nd chapter, October 25, 2013);
- according to an expert: 2000 € multiplied by a multiplying coefficient if the invention is a commercial success, 1000 € in other cases (in the field of electronics, Court of Appeal of Paris, Pole 5, 2nd ch. December 16, 2011);
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.
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.
Request for additional documents
In any event, 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.
Small focus on 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 ...