What happens when a patent application is filed by someone who was not entitled to do so—typically because the invention was misappropriated from them, or in violation of a legal or contractual obligation? The true rightful owner is not left without recourse: they have a claim for entitlement (Article L611-8 of the Intellectual Property Code; for European patents, Article 61 EPC).
Asserting entitlement to the patent
The aggrieved party may claim ownership of the patent application or the granted patent (Article L611-8 IPC). Instead of seeking the invalidation of the patent, the rightful owner demands its transfer in their favor: after all, the usurper merely occupied a position that was not theirs.
Jurisdiction
In France, patent disputes fall under the exclusive jurisdiction of the Paris Judicial Court (D211-6 of the Judicial Organization Code). It is before this court that the entitlement action must be brought.
Time limit for action
The action is time-barred after five years from the publication of the patent grant. However, beware of the wrongdoer: in cases of bad faith at the time of grant or acquisition of the patent, the time limit is five years from the expiration of the patent (Article L611-8 IPC)—meaning the thief remains exposed for the entire life of the patent.
The case of the European patent
For a European patent application, the rightful owner must first obtain, in a contracting state, a decision recognizing their entitlement to the patent (Article 61 EPC and the Protocol on Recognition). This decision will then open the options described below before the EPO.
Suspension of the grant procedure
Principle
There is no question of allowing the patent to be granted to the usurper while litigation is ongoing. If a third party provides evidence that they have initiated proceedings to assert their entitlement, the EPO suspends the grant procedure (Rule 14 EPC).
Effects and relevant dates
The suspension takes effect from the date on which evidence of the action is provided, and pending deadlines are generally interrupted. However, suspension can no longer be requested once the mention of grant has been published: beyond this point, the entitlement action (rather than suspension) takes over.
Limitations
- annual official fees continue to accrue: suspension does not exempt payment;
- the publication of the application is not prevented;
- the suspension may be lifted, particularly with the third party’s consent or, at the EPO’s discretion.
A similar logic may apply during an opposition procedure when an entitlement issue is raised.
Exercising entitlement after recognition
Once entitlement is recognized by a final decision, the rightful owner has, for a European patent, a three-month period to exercise one of the following options (Article 61 EPC and Rules 16 to 18 EPC):
- file a new European patent application for the same invention, which benefits from the filing date (and, where applicable, the priority) of the initial application;
- proceed with the existing application by substituting themselves for the original applicant;
- request the rejection of the application.
When recognition applies to only part of the invention, a partial transfer is arranged (Rule 18 EPC). Under French law, the prevailing rightful owner is retroactively recognized as the proprietor of the application or the patent (Article L611-8 IPC): the usurper is, in effect, erased from the record.