FALL 2019 TODAY’S GENER AL COUNSEL
Labor & Employment
Protecting IP With Employment Agreements in France By Julian Haure and Marine Hamon
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round 90 percent of artistic or technical creations are now conceived by employees. These creations and inventions are part of companies’ major assets and contribute to valuing the business, notably in M&A operations. Yet an employer in France does not automatically own the intellectual property rights on industrial or artistic works created by employees in the course of their employment, even when such employees were specifically hired to invent or develop technologies. French employment law and French intellectual property law have always pursued different goals, which can make rights’ ownership tricky to assert and hence protect. Indeed, the subordinate nature of the employment relationship goes against one of the very core principles of French intellectual property law — that the rights attached to a protectable work belong to the author and are
not transferred ab initio to the employer even though the work was created in the workplace and with the means made available to the employee by the employer. In addition, and subject to the nature of the employee’s creation (patentable invention, software or creation protectable by copyrights), different protections and rules may apply. This initial difficulty is reinforced by our modern scattered work conditions, where one’s home can also become one’s workplace from time to time. The line between working time and free time is also a difficult one to draw since most executive employees can arrange their working time as they see fit. They are no longer subject to the legal working time (i.e., 35 hours per week) but most of the time are required to work a set number of days per year. Such flexibility brings new challenges for companies seeking to adequately protect their intangible assets. Extra care
must therefore be taken when drafting employment agreements to ensure exclusive ownership on all intellectual property attached to inventions or developments conceived in the frame of the employment relationship. This article aims at presenting an overview of the main IP clauses and some practical tips to keep in mind when drafting them in French employment contracts. PATENTABLE INVENTIONS
Intellectual property rights on patentable inventions are well regulated by the French intellectual property code, which prescribes a set of specific rules to determine ownership and facilitate the drafting of IP clauses in employment agreements. In a nutshell, three categories of employees’ inventions are set out in Article L. 611-7 of the French Intellectual Property Code, which are summarized below:
CATEGORY
CONTEXT
COMPENSATION
OWNER OF THE INVENTION
Inventions created as part of an “inventive mission”
The employment agreement clearly outlines that the employee is hired to invent or to work on an invention
Additional remuneration per invention. Amount set by the applicable collective bargaining agreement, a companywide collective agreement or the employment contract
The company
Inventions created outside an “inventive mission” but that could be assigned to the employer
The employee does not have an inventive mission per se but the invention was created over the course of his/ her duties, within the field of activity of the company or via the technologies or specific means made available by the company to the employee
“Adequate” consideration for each invention assigned (lump-sum or amount proportionate to the revenue or mix of both)
The company
Inventions that cannot be classified in any of the two above categories
The invention was conceived outside the company’s premises, during the employee’s free time
No compensation but employee is free to use the invention, file a patent and make profit out of it
The employee