Key points
- In an R&D collaboration, ownership of intellectual property is governed first and foremost by the contract (Article 1102 of the French Civil Code (Code civil)).
- A clear contract designates the owner of the results, organises their exploitation and settles what happens to future improvements.
- In the absence of a clause, default statutory regimes apply, in particular on employee inventions and joint ownership of a patent (copropriété).
- A mission invention belongs to the employer, with additional remuneration for the employee inventor (Article L.611-7 of the French Intellectual Property Code (Code de la propriété intellectuelle)).
- Joint ownership of patents is governed by Article L.613-29: each co-owner may exploit the invention, but an exclusive licence requires the consent of all.
- The contract must distinguish pre-existing contributions (background), which remain the property of their owner, from new results (foreground) arising from the joint work.
Two companies pool resources to develop a technology. The project succeeds: an invention is made, software emerges, know-how builds up. Then comes the question that should have been settled before the first line of code: who owns these results? Experience shows that R&D disputes rarely concern the science and almost always concern ownership of the fruits of the joint work. There is no single answer. It depends first on what the parties have agreed, because ownership is governed by the contract. In the absence of a clause, default statutory regimes take over, whether for employee inventions or joint ownership of patents. Addressing this question from the negotiation stage avoids costly deadlocks at the exploitation stage. This article sets out the hierarchy of applicable rules.
Every project is different and depends on the terms of the collaboration agreement and on the status of the parties involved. The analysis below sets out the applicable framework, not advice tailored to a specific case.
Who owns IP in an R&D collaboration? First, the contract
In R&D matters, freedom of contract prevails. Article 1102 of the Civil Code allows the parties to determine the content of their agreement. They may therefore freely agree on ownership of the results: allocation to one party, organised joint ownership, cross-licences, separate exploitation rights by field. This is the purpose of vesting or ownership clauses.
This freedom is the first safeguard. A contract that clearly designates the owner of the results, organises their exploitation and settles what happens to future improvements avoids the application of default rules that are often ill-suited to the project. Conversely, a silent contract leaves the parties to the default statutory regimes, whose outcome is not always the one they would have chosen.
Employee inventions: the regime under Article L.611-7
Patentable results are often the work of employees. Article L.611-7 of the Intellectual Property Code then allocates them according to a precise classification. This regime applies independently of the collaboration agreement, within each partner company.
Mission inventions (invention de mission)
An invention made by an employee in the performance of an employment contract that includes an inventive mission corresponding to their duties, or of studies and research explicitly entrusted to them, belongs to the employer. In return, the employee inventor receives additional remuneration, on terms set by collective agreements, company agreements and employment contracts.
Other employee inventions
Inventions made outside an inventive mission, but within the company’s field of activity or using its resources, may be claimed by the employer under the conditions laid down in the text. Inventions unrelated to the company belong to the employee. Any agreement between the employee and the employer on an invention must be recorded in writing, failing which it is void.
Joint ownership of a patent between partners
Where the results belong jointly to several partners, a joint ownership regime may apply. Article L.613-29 of the Intellectual Property Code sets the rules: each co-owner may exploit the invention for its own benefit, subject to paying fair compensation to the co-owners who do not exploit it, and may bring infringement proceedings. The grant of a non-exclusive licence is subject to specific formalities, and an exclusive licence requires the consent of all co-owners or court authorisation.
This regime is a default one. The co-owners may depart from it through co-ownership regulations (règlement de copropriété) tailored to their project (Article L. 613-32). Here again, contractual anticipation prevails: relying on the statutory regime means accepting management constraints that can be burdensome, particularly for exclusive licences.
Background and foreground: distinguishing contributions from results
An R&D collaboration combines pre-existing elements contributed by each party and new results arising from the joint work. The distinction between these prior contributions and the results of the collaboration structures any serious contract. The former in principle remain the property of their owner; the latter call for a specific ownership clause.
The contract then specifies who holds the results, who may exploit them, in which field and on what terms. Rights to use the prior contributions, where needed to exploit the results, are covered by dedicated licences. This structure determines the real value each party derives from the project.
Points to watch
- Ownership is governed first by the contract: a clear vesting clause prevails over the default regimes.
- The employee inventions regime (Article L.611-7) applies within each company, independently of the collaboration agreement.
- Joint ownership of patents is a default regime: co-ownership regulations can adapt it.
- Distinguish prior contributions from new results, and organise each party’s exploitation rights.
- The regime in Article L. 611-7 covers patentable inventions; know-how, software and databases are subject to their own regimes and to the contract (for software created by employees in the course of their duties, Article L. 113-9).
When should you consult a lawyer?
A lawyer’s assistance is useful to draft ownership and exploitation clauses, to reconcile the employee inventions regime with the joint ownership regime, and to organise cross-licences between partners. Drafting ahead prevents deadlocks at the commercialisation stage. To make an R&D collaboration legally sound, support from an intellectual property lawyer in Paris helps align the allocation of rights with each party’s business objectives.
Each case deserves its own analysis: the solution depends on the facts, the drafting of the contract and the status of the parties involved.
What the law says
In a collaborative project, intellectual property does not automatically belong to the party that pays. In copyright, Article L. 111-1 of the Intellectual Property Code provides, in substance (unofficial translation, only the French text is authoritative), that the author of a work of the mind enjoys in that work, by the mere fact of its creation, an exclusive incorporeal property right enforceable against all. The same text states that the existence of a contract for services or for the hire of work does not derogate from this right, subject to the exceptions provided for by the code: the service provider in principle remains the owner of its creations. Among these exceptions, the economic rights in software created by an employee in the course of their duties or on the instructions of their employer vest in the employer, unless otherwise agreed (Article L. 113-9 of the Intellectual Property Code (in French)).
The transfer of the author’s economic rights requires each right assigned to be mentioned separately in the deed of assignment and the field of exploitation to be defined as to its extent and purpose, place and duration (Article L. 131-3 of the Intellectual Property Code). Without a carefully drafted assignment clause, the client who paid for the development may end up as a mere user, without ownership. Hence the importance of a rights vesting clause in any collaboration agreement.
Official sources
- Article L111-1 of the French Intellectual Property Code, initial ownership by the author: Légifrance (in French)
Every situation is different. To make the allocation of IP rights in a collaborative project legally sound, our intellectual property lawyers assist you.
For assistance: intellectual property lawyer.
