Industrial property lawyer in Paris: taking stock of patents, trade marks, designs.

Because industrial property cannot be presumed from use. A company may have sold for years a product whose shape was never filed, use a trade mark registered in its founder's name, or operate a process patented by a dissolved subsidiary. The inventory consists in reconciling three sources: what the company uses, what the national registers show and what the contracts provide.

These gaps have specific effects. Any act transferring a patent must be recorded on the register to be enforceable against third parties (Article L. 613-9 of the Intellectual Property Code), and the Court of Cassation refuses the acquirer's infringement action as long as that recordal is missing (Cass. com., 24 April 2024, No. 22-22.999). A trade mark not used for five years is exposed to revocation (Article L. 714-5), and a patent whose annuity is not paid lapses (Article L. 613-22).

Finally, the inventory is also useful for transactions. Before a fundraising, a contribution or a sale, the investor or buyer asks for the list of titles and warranties. A map prepared in advance makes it possible to regularise recordals, correct owners and set warranties that match the real situation, rather than discovering the gaps during the negotiation.

Ownership of a trade mark is acquired by registration (Article L. 712-1 of the Intellectual Property Code). If the certificate names the founder personally, the founder is the owner, even where the company alone has used the trade mark from the outset. The company then uses it only with the founder's authorisation, the existence and scope of which must be established, since it is the founder who can assign, license or pledge the trade mark.

The fix is an assignment of the founder's rights to the company. The rights attached to a trade mark may be transferred in whole or in part (Article L. 714-1), and the transfer must be recorded in the National Trade Mark Register to be enforceable against third parties (Article L. 714-7). The deed states the price or that the transfer is made without payment, the trade marks concerned by their number and, where relevant, the fate of pending actions.

This regularisation becomes urgent before an investor comes in or the shares are sold, which generally require an ownership warranty. It is also urgent before an action against a competitor. The commercial chamber holds that the owner recorded on the register is admissible to bring an infringement action, any discussion of the chain of rights being a matter for the examination of the merits (Cass. com., 23 September 2026, No. 24-20.689). The firm therefore first checks who appears on the register.

No. The assignment deed, which must be in writing on pain of nullity (Article L. 613-8 of the Intellectual Property Code), becomes enforceable against third parties only once it is recorded in the National Patent Register (Article L. 613-9). The Court of Cassation draws a clear procedural consequence: as long as the recordal has not been made, the acquirer is not admissible to bring an infringement action. That plea of inadmissibility can nevertheless be cured during the proceedings, and the commercial chamber quashed the judgment that then limited compensation to acts after the recordal.

The recordal then opens a wider action than is commonly thought. In the same decision, the commercial chamber accepts that the successor in title, once recorded, may claim compensation for acts committed since the transfer and, “if the deed transferring the rights so specifies, for the harm caused to them by acts committed before the transfer” (our translation) (Cass. com., 24 April 2024, No. 22-22.999). The drafting of the deed therefore matters as much as its recordal.

In practice, the firm checks the date of the deed, the signature of the recorded assignor, the precise description of the patent and of any foreign patents of the same family, then the recordal date. Where the infringer has already been identified, the recordal request preferably precedes the writ of summons, and the assignment deed expressly provides for the transfer of actions arising before the assignment. For designs and models, recordal in the national register likewise governs the enforceability of transfers (Article L. 513-3), but the applicant also benefits from a statutory presumption, set out in the next question.

The Code sets a presumption in favour of the applicant: protection of a design or model is acquired by registration, and the person who filed the application is regarded as the beneficiary, unless proven otherwise (Article L. 511-9 of the Intellectual Property Code). If the company filed the design in its own name, it therefore has a solid basis to act against copies.

The Court of Cassation has clarified the scope of this presumption. It quashed a judgment that denied the applicant the right to bring an infringement action on the ground that the assignment it relied on had not been published in the national register, recalling that “The presumption arising from this provision in favour of the applicant can be rebutted only where a claim of ownership of the design or model is made by the natural person or persons who created it” (our translation) (Cass. com., 31 January 2024, No. 22-20.409).

The risk therefore comes from the creator. The designer or agency that considers the filing to have been made in fraud of its rights may claim ownership in court, within five years of publication of the registration; if the applicant was acting in bad faith at the time of publication or acquisition, that five-year period runs only from the expiry of the protection (Article L. 511-10). The inventory looks for the service contract, checks that it contains a written assignment of rights in the creations delivered and, failing that, has an assignment signed before any sensitive use.

Article L. 611-7 of the Intellectual Property Code distinguishes according to the mission. Inventions made in the performance of a contract that includes an inventive mission corresponding to the employee's actual duties, or of studies and research explicitly entrusted to the employee, belong to the employer. The employee-inventor is then entitled to additional remuneration, the terms of which are set by the collective agreement, the company agreement or the contract. Other inventions belong to the employee, although the employer may in certain cases be awarded the title against a fair price.

An invention made in the course of assigned duties becomes an asset of the employer, which may transfer it: “Nothing prevents the latter from assigning that right to a third party” (our translation) (Cass. com., 5 January 2022, No. 19-22.030). The appeal to the Court of Cassation by the employee, who disputed the assignee's right, was dismissed.

In that case, the invention had been classified as an invention made in the course of assigned duties, and the employer's intangible assets had then been sold; the assignee was able to rely on that classification against the employee who claimed the patent. The inventory must therefore follow the chain back to the original employer and check two points: the nature of the invention in light of the employee's actual duties, and the effective transfer of the right to the patent at each stage. The firm gathers the employment contract, the real description of duties, the invention disclosure and the acquisition deed, before any filing or assignment of the patent.

An owner who does not pay the annual fee within the prescribed period forfeits their rights; forfeiture takes effect on the date of the unpaid instalment and is recorded by a decision of the Director of the INPI, published and notified to the patentee (Article L. 613-22 of the Intellectual Property Code). Before it comes to that, an annuity unpaid on its due date can still validly be paid within a six-month grace period, with a surcharge (Article L. 612-19).

After that grace period, the only remedy is an application for restoration, on narrow conditions. The applicant must show a legitimate excuse and submit the application to the Director General of the INPI within two months of the end of the impediment, and in any event within one year after the grace period expires; restoration also requires payment of the fees due within the regulatory period (Article L. 612-16).

The Court of Cassation applies these time limits strictly. It held that “notification of the decision recording the forfeiture of a patent, whether made to the patentee or to its agent, ends the legitimate excuse” (our translation) (Cass. com., 17 May 2023, No. 22-10.744), and dismissed the appeal of a patentee whose application was late. That decision is unfavourable to the owner: the default of its agent did not protect it. The inventory therefore notes each deadline, the agent responsible for payment and the address to which the INPI sends its decisions.

It remains on the register as long as revocation has not been ordered, but an action becomes fragile. An owner who, without proper reason, has not put the trade mark to genuine use for the goods or services designated, during an uninterrupted period of five years, is liable to revocation of their rights (Article L. 714-5 of the Intellectual Property Code). The provision treats as use any use made with the owner's consent, in particular by a licensee.

Revocation is assessed product by product. Where a broad specification is used for only some of the goods, the commercial chamber states that “the court must examine whether the category covered by the registration of the trade mark can be divided, objectively and non-arbitrarily, into autonomous and coherent sub-categories” (our translation) (Cass. com., 14 May 2025, No. 23-21.296). The owner may thus keep the sub-category in use and lose the rest.

The inventory therefore sorts evidence of use by trade mark, by product and by year: invoices, catalogues, advertisements, dated website captures. When a trade mark is no longer used, it is better to know before asserting it: at the defendant's request, the infringement action is inadmissible if the owner does not prove genuine use during the five years preceding the claim, for the goods relied on, or proper reasons for non-use (Article L. 716-4-3). For the future, the firm can propose a genuine resumption of use, a narrowing of the specification or a more targeted filing; use resumed in the three months preceding an application for revocation, after the owner has learned that it might be made, does not prevent it (Article L. 716-3), and a new filing counts only from its own date.

Through an ownership claim. If registration was applied for in fraud of a third party's rights or in breach of a legal or contractual obligation, the person who considers that they have a right in the trade mark may claim ownership in court (Article L. 712-6 of the Intellectual Property Code). Unless the applicant acted in bad faith, the action is subject to a limitation period of five years from publication of the registration application.

Bad faith therefore removes the limitation period, and the courts must examine it concretely. The Court of Cassation quashed a judgment that had held, in order to dismiss the fraud, that “the desire to protect one's surname, when it is used in the course of business, is in itself a legitimate aim” (our translation) (Cass. com., 13 November 2025, No. 24-14.355). It held those grounds unsuitable for ruling out bad faith where the applicant knew the sign was already in use by a third-party company, and quashed for lack of legal basis.

Knowledge of prior use is thus one indication of bad faith among others, established by dated documents: business relations, contracts, emails, joint attendance at a trade fair. The inventory makes it possible to spot such competing filings early, before the five-year period runs out, and to check that an ownership claim is the right route, rather than an action for nullity based on an earlier right.

In principle, no. The seller remains bound by the warranty arising from a personal act, and any contrary agreement is void (Article 1628 of the French Civil Code). The commercial chamber recalls that “the assignor of rights in a trade mark is bound in the terms of Article 1628 of the Civil Code” (our translation) (Cass. com., 28 February 2024, No. 22-23.833), so that the assignor cannot seek revocation of the assigned trade mark for deceptiveness, a claim aimed at evicting the acquirer.

The same decision reserves an exception: “the warranty in favour of the assignee ceases when the eviction is due to the assignee's own fault” (our translation) (Cass. com., 28 February 2024, No. 22-23.833). The assignor can therefore act if relying on wrongful facts occurring after the assignment and attributable to the acquirer. On that point, the Court of Cassation rejected the first ground and referred a question for a preliminary ruling to the Court of Justice of the European Union on the revocation of a trade mark consisting of a designer's name. The decision therefore did not settle that second question. The Court of Justice answered it on 18 December 2025: EU law does not preclude revocation of a trade mark consisting of a fashion designer's surname where, in light of all the circumstances, its use leads the average consumer wrongly to believe that the designer took part in designing the products (CJEU, 18 December 2025, PMJC, C-168/24). Assessment of those circumstances is for the national court.

For the acquirer, the inventory checks the standing of the recorded assignor, the scope of the warranty provided in the deed and the conditions of use that could mislead the public. For the assignor, it identifies the clauses that govern future use of their name.

Yes, where it constitutes an earlier right and there is a risk of confusion. The Court of Cassation holds that “the owner of an earlier right may bring an action for nullity of the registered trade mark if there is a risk of confusion in the mind of the public, even where the owner of the contested trade mark holds a right older than that of the third party challenging it” (our translation) (Cass. com., 10 January 2024, No. 22-21.716). The applicant's appeal was dismissed: the outcome is unfavourable to the applicant.

Time, however, works against the inactive owner. A person who has tolerated for five consecutive years the use of a later registered trade mark, knowing of that use, can no longer seek its nullity for the goods or services concerned, unless the filing was made in bad faith (Article L. 716-2-8 of the Intellectual Property Code). The Court of Cassation applied this time bar to the owner of a trade mark with a reputation, who “can no longer seek nullity of the later trade mark, nor oppose its use for the goods or services for which the later trade mark has been used” (our translation) (Cass. com., 5 June 2024, No. 23-15.380), an outcome unfavourable to the owner.

The inventory therefore lists the company's unregistered signs, company name, trade name, shop sign, and monitors neighbouring filings, so as to act before that period expires.

A trade mark is registered for ten years, renewable indefinitely (Article L. 712-1 of the Intellectual Property Code). Today, the renewal declaration comes from the owner recorded on the register or from an authorised person (Article R. 712-24), which creates a difficulty when ownership is disputed for several years. In a case decided under the rules prior to the Order of 13 November 2019 and the Decree of 9 December 2019, the Court of Cassation noted that “the time limits for declaring the renewal of a trade mark, provided for in Article R. 712-24, 1°, of the Intellectual Property Code, are open only to the owner recorded on the national trade mark register” (our translation) (Cass. com., 15 October 2025, No. 24-10.651).

The claimant had succeeded after more than thirteen years of proceedings, by which time the trade mark had expired. The commercial chamber held the loss of the claimant's right to be disproportionate and moved the starting point of the renewal period to the recordal of the transfer ordered by the court, before annulling the INPI's decision of inadmissibility.

This solution, given in the particular circumstances of the case, does not remove the need to monitor deadlines. Where a claim or an assignment is pending, the inventory notes the trade mark's expiry date, the person recorded and the entry of the action on the register. The firm can then arrange renewal by the recorded owner or provide, in the agreement with the opposing party, who renews and on whose behalf.

Yes, because they limit the unrestricted disposal of the title and condition legal actions. Rights in a trade mark may be licensed on an exclusive or non-exclusive basis and pledged (Article L. 714-1 of the Intellectual Property Code); rights in a patent may be the subject of licences of the same kind, evidenced in writing on pain of nullity (Article L. 613-8). These deeds must be recorded in the national register to be enforceable against third parties.

A licence also changes who may bring which actions. For a patent, the exclusive licensee may bring an infringement action, unless otherwise stipulated, provided the owner is informed beforehand; a non-exclusive licensee may do so only if the contract expressly allows it, and subject to the same prior notice (Article L. 615-2). For a trade mark, the licensee acts with the owner's consent, unless otherwise stipulated, and any party to the licence may intervene to obtain compensation for its own harm (Article L. 716-4-2).

The inventory therefore lists each licence, its term, territory, exclusivity, recordal date and the clause on actions. It also identifies jointly owned patents, whose statutory regime allows each co-owner to use the invention or grant a non-exclusive licence, subject to fair compensation of the co-owners who neither use it themselves nor have granted a licence; the draft non-exclusive licence must also be notified to the others together with an offer to sell the share at a fixed price, each of them being able to oppose it within three months by buying that share (Article L. 613-29).

The preliminary review offered on this page, at the fee of €80 incl. VAT, covers the documents you send: list of known titles, certificates, assignment or licence deeds, creation contracts and, if a transaction is being prepared, the draft deed or agreement. Reda Kohen reviews these documents and sends a first written analysis within 24 to 48 business hours.

For each title submitted, this analysis sets out the points to check or correct first: registered owner, unrecorded deeds, imminent deadline, scope to be confirmed, missing clause in a creation contract. It also flags creations in use that do not appear to be covered by any title and the questions that require an additional register extract.

The review does not replace the full inventory where the portfolio includes many titles, several countries or old contracts. It does, however, make it possible to gauge the scale of the work, to prioritise regularisations and to decide whether a recordal, an assignment or a renewal should be started without delay. Any follow-up is covered by a separate fee agreement, drawn up after this first reading.