Intellectual property lawyer in France

Because the value of a trademark, a piece of software or an invention depends less on its quality than on the strength of the chain of rights. A business that exploits a creation without owning it can neither usefully assign it, nor give it as security, nor defend it. The Court of Cassation reiterated this in approving a court of appeal for having held that “the ownership of the author's economic rights in the creations was a condition for the admissibility of an infringement action in respect of those rights” (our translation) (Cass. 1re civ., 28 January 2026, No. 24-11.394): the company that had implicitly assigned its rights to another company no longer had standing to sue.

Acting early serves three purposes. It identifies the right title for each asset, drafts the contracts that transfer or license the rights, and then has those deeds recorded in the registers so that they can be relied on against third parties. The firm examines these points before a fundraising, a sale of a business, the arrival of an industrial partner or the signing of a licence, which are the moments when a buyer or an investor will ask for proof of each right.

The inventory starts with registered titles: trademarks registered with the INPI, the European Union Intellectual Property Office or the WIPO, designs, patents. Trademark rights arise from registration (Article L. 712-1), so the name of the applicant shown in the register matters as much as the sign itself.

Next come creations without a register. Copyright belongs to the author by the sole fact of creation, and the existence of an employment or service contract does not change this (Article L. 111-1). Unless proven otherwise, the author is presumed to be the person under whose name the work is disclosed (Article L. 113-1). Software written by employees and mission inventions follow their own rules, which favour the employer.

Finally, some information qualifies as a trade secret where it is not readily accessible, has commercial value and is subject to reasonable protective measures (Article L. 151-1 of the French Commercial Code). For each asset, the firm checks the holder, the proof and the expiry date.

For software, the economic rights in programs and their documentation created by an employee in the exercise of their duties or following the employer's instructions vest in the employer, unless otherwise stipulated (Article L. 113-9). For the employee's other creations, such as texts, visuals or videos, the employment contract does not transfer anything automatically, and a written assignment remains necessary.

For an invention, Article L. 611-7 draws a distinction. An invention made in the performance of an inventive mission corresponding to the employee's actual duties, or of studies expressly entrusted to them, belongs to the employer, who informs the employee when the application is filed and when the title is granted (Article L. 611-7). The employee is entitled to additional remuneration, and the Court of Cassation held that “the employee's action for additional remuneration fell within the exclusive jurisdiction of the tribunal de grande instance, now the judicial court” (our translation) (Cass. soc., 23 October 2024, No. 22-19.700).

The employer may assign this right to the patent, the Court of Cassation stating that “No provision prevents the latter from assigning that right to a third party” (our translation) (Cass. com., 5 January 2022, No. 19-22.030). The deed must therefore refer precisely to the inventions concerned.

The law requires each assigned right to be mentioned separately in the deed, and the field of use to be defined as to its scope, purpose, place and duration (Article L. 131-3). The law also requires a written document for any contract transferring copyright (Article L. 131-2). A general clause assigning “all rights” without further detail exposes the business to challenge.

The Court of Cassation states, for a publishing contract, that “the written record of the publishing contract is not required for the validity of the contract but for its proof” (our translation) (Cass. 1re civ., 2 September 2026, No. 25-15.216). An admission can then take the place of a written document, provided it makes it possible to define the field of use. It is better not to depend on that.

The author's remuneration is in principle proportional to revenue, but it may be a lump sum in the cases listed by law, in particular for the assignment of rights in software or where the author's contribution is only incidental (Article L. 131-4). The firm drafts or reviews the assignment clause, the assignor's warranty against third-party claims and the fate of the source files.

Yes, if you want to rely on it against third parties. Any transfer or change of the rights attached to a trademark must be recorded in the National Trademark Register to be enforceable; before recording, the deed can be relied on only against third parties who knew of it (Article L. 714-7). The rule is the same for patents, with the National Patent Register (Article L. 613-9).

Recording is not a condition of validity between the parties. For a trademark included in a business that was sold, the Court of Cassation held that “failure to register within the period laid down by that provision results, not in the nullity of the trademark assignment, but in the security being unenforceable against third parties” (our translation) (Cass. com., 26 June 2024, No. 23-11.020). In its version in force since 1 January 2023, resulting from the reform of the law of security interests, Article L. 143-17 of the French Commercial Code (Code de commerce) now expressly provides for unenforceability against third parties (Article L. 143-17 of the French Commercial Code).

A licensee whose contract is not recorded can still intervene in the infringement proceedings brought by the proprietor in order to obtain compensation for its own loss. Recording remains the simple measure that avoids disputes.

Yes. A proprietor who, without proper reason, has not made genuine use of the trademark for the goods or services covered during an uninterrupted period of five years is liable to revocation of its rights (Article L. 714-5). Use with the proprietor's consent, by a licensee for example, or in a modified form that does not alter the distinctive character, counts as use.

Revocation may be partial. The Court of Cassation holds that, where the extent of use is disputed, “the judge must determine whether the category covered by the trademark registration can be divided, objectively and non-arbitrarily, into autonomous and coherent sub-categories” (our translation) (Cass. com., 14 May 2025, No. 23-21.296). A trademark registered for a broad specification but used for only one type of product may therefore survive only for that product.

The answer lies in evidence. Invoices, catalogues, dated website captures, sales figures by product range: these documents are kept year after year, product by product. The firm can audit a portfolio, identify the trademarks at risk and propose a better-targeted new filing where use has changed.

A transfer of the whole business carries with it the rights attached to the trademark, unless otherwise agreed or unless the circumstances clearly show otherwise (Article L. 714-1). The assignment of the trademark itself must be recorded in writing, on pain of nullity, under the same article.

Contracts linked to the trademark do not follow automatically. The Court of Cassation so held for selective distribution: “The sale of a business that includes the transfer of ownership of rights in trademarks does not, unless the deed of sale provides otherwise, entail the transfer of the selective distribution contract for products bearing those trademarks” (our translation) (Cass. com., 18 February 2026, No. 23-23.681). Where that contract and the trademark licence formed an indivisible whole, the licence was no more transferred.

The deed of sale must therefore list the titles, the licences granted or received and the distribution contracts, and then specify the fate of each. The sale of a business that includes trademarks, designs or patents must also be recorded with the INPI to be enforceable against third parties (Article L. 143-17 of the French Commercial Code).

Yes. The rights attached to a trademark can be transferred in whole or in part (Article L. 714-1), as can those attached to a patent (Article L. 613-8), and they can therefore be the subject of a contribution in kind. In a public limited company (société anonyme), a contributions appraiser assesses, under their own responsibility, the value of contributions in kind (Article L. 225-147 of the French Commercial Code); the simplified joint-stock company (SAS) follows these rules, with a possible waiver by unanimous decision below thresholds set by decree (Article L. 227-1 of the French Commercial Code).

The independence of this appraiser is checked. In a case concerning a contribution of shares, the Court of Cassation held that “the functions of contributions appraiser are, on pain of nullity of the resolutions passed on the basis of their report, incompatible with any activity or act liable to undermine their independence” (our translation) (Cass. com., 28 May 2026, No. 25-13.211).

The contribution is recorded in writing and entered in the trademark or patent register to be enforceable. Where the contributor wishes to keep ownership, a licence granted to the company can be an alternative; the firm compares the two structures in light of the planned transaction.

Through trade secret protection. Protection extends to any information that is not generally known or readily accessible in the sector, that has commercial value because it is secret and that is subject to reasonable protective measures by its lawful holder (Article L. 151-1 of the French Commercial Code).

The third condition is the one most often neglected. Confidentiality agreements before any negotiation, restricted access to files, confidentiality notices, clauses in employment and service contracts: these measures must exist before a leak and be capable of being proved.

The protection is not absolute. The Court of Cassation accepts that “the right to evidence may justify the production of material covered by trade secrets, provided that the production is indispensable to the exercise of that right and that the interference is strictly proportionate to the aim pursued” (our translation) (Cass. com., 5 June 2024, No. 23-10.954). A competitor may therefore, in certain circumstances, produce in court a document covered by secrecy. The firm helps decide what should be patented, what should remain secret and how to document the measures taken.

Time matters. Within two months of publication of the application, an opposition may be filed with the Director General of the INPI, in particular on the basis of an earlier company name, trade name or domain name creating a risk of confusion (Article L. 712-4).

Where registration was applied for in fraud of a third party's rights, the person who believes they have a right in the trademark can claim ownership of it in court; unless the applicant acted in bad faith, the action is subject to a five-year limitation period running from publication of the application (Article L. 712-6).

Waiting can be costly. The proprietor of an earlier right who has tolerated for five years the use of a later registered trademark, knowing of that use, can no longer seek its nullity, unless the filing was made in bad faith (Article L. 716-2-8). The Court of Cassation applies this even to a trademark with a reputation, whose proprietor “can no longer seek the nullity of the later trademark, or oppose its use for the goods or services for which the later trademark has been used” (our translation) (Cass. com., 5 June 2024, No. 23-15.380), a solution unfavourable to the inactive proprietor.

A trademark is protected for ten years from filing, and the registration can be renewed indefinitely (Article L. 712-1), provided it is genuinely used. A patent is granted for twenty years from the filing date of the application, a utility certificate for ten years (Article L. 611-2). For a product subject to a marketing authorisation, a supplementary protection certificate can extend the effect of the patent by up to seven years after its expiry, under the same article.

A registered design takes effect for five years from filing, extendable in five-year periods up to a maximum of twenty-five years (Article L. 513-1). Copyright, which requires no formality, lasts for the author's lifetime and then for the current calendar year and the seventy years following their death (Article L. 123-1).

These periods call for active management: renewals, evidence of use, monitoring of competing filings. The firm can draw up a calendar of the portfolio's deadlines so that no title lapses for lack of diligence.

In principle, the civil infringement action belongs to the trademark proprietor; a licensee may bring it only with the proprietor's consent, unless the contract provides otherwise (Article L. 716-4-2). However, the holder of an exclusive right of use may sue if, after formal notice, the proprietor does not act within a reasonable time.

Any party to a licence contract may intervene in proceedings brought by another party in order to obtain compensation for its own loss. The time limit for bringing proceedings is five years; it runs from the last fact that the proprietor knew, or should have known, under the same article.

These rules are negotiated when the licence is drawn up. Who monitors the market, who decides to sue, who bears the costs and who receives the damages: the contract must say so. The firm drafts these clauses according to the business's position, as proprietor or licensee, and sees to the recording of the licence in the register.