How to jump through the hoops to secure your IP?

by Damien Gorse of Luchtenberg Avocats, a commercial and corporate lawyer who shares his time between Paris and London and specialises in helping foreign businesses achieve commercial success in France.

Whether you are setting up your business in France, or simply contracting with French service providers or subcontractors for the development of work protected by IP rights (mobile apps, marketing and communication supports, technical documentation, computer program, etc.), it is essential that you secure your company’s ownership of those rights.

And as French lawyers advising UK and US companies developing their businesses in France on a regular basis, we frequently notice that assignments of IP rights drafted by non-French lawyers in such contracts do not comply with French IP rules, and end up being unenforceable in France.

How to comply with French IP laws?

French lawmakers deem authors, artists and creators to be the weaker party in a contract, and therefore erected several public policy rules (règles d’ordre public) to protect them. Hence, assignments of IP rights must comply with certain specific rules in order to be enforceable in France.

For instance, an assignment of IP rights will need to conspicuously describe the rights that are being transferred (reproduction, representation, adaptation, translation or marketing rights, etc.), and to clearly define the scope of application of the assignment, namely the media and purposes concerned, the duration of the assignment and the territory on which it applies.

The assignment will also need to define the price on which the assignor and the assignee agreed upon for the transfer of such IP rights. IP rights transferred free of charge are usually not looked at favourably by French jurisdictions.

Finally, you should avoid any waiver of moral rights in your contracts, as moral rights are unalienable in France.

What about the ownership of employee-created IP?

Another French specificity you should bear in mind lies in the ownership of employee-created IP.

Indeed, as opposed to most of Anglo-Saxon systems, an employment contract does not entail the assignment of your employees’ IP rights on his/her work.

Therefore, it is essential that you consider including a provision for the assignment of such rights with a separate compensation for the said transfer in the employment contracts you intend to sign with your French employees.

There are however two exceptions to this principle: when an employee develops a software and/or when an employee is involved in an invention, patentable or not, in the course of his/her employment. In these specific cases, the IP rights will automatically vest in the company. In order for such transfers to be valid it is essential that the employee has a specific mission described in his/her employment agreement which includes the development of the relevant software or invention.

This article does not constitute legal advice and should not be relied upon as such.


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