16.04 – Patents – KOR


Patent law is one of the firm’s main activities.

We offer our clients a complete and transversal service, combining our expertise in advice and litigation:

  • by advising you on the exploitation of your patents (negotiation and drafting of license agreements, assignments, etc.);
  • and by defending your patents both in the context of administrative litigation before the French National Institute of Industrial Property (INPI) and in the event of judicial or extrajudicial litigation.

Exploitation of your patents and drafting of collaborative research agreements

As we are not patent agents, we cannot help you for the drafting, filing and prosecution of your patent applications. However, we can recommend you to French patent agents with whom we are working.

However, as lawyers with a great experience in contract law, we can advise you as best as we can to negotiate and draft all types of contracts related to the exploitation of your patents: assignment contract, license contract, confidentiality agreement, transmission of know-how, co-ownership agreement in the case of a patent with several co-holders, consortium agreement, etc.

Moreover, where two or more partners wish to work together on a joint programme of research and where either side may bring different types of resources into the research, in the form of cash, inkind contributions and/or pre-existing intellectual property, we can help these parties to draft and negotiate a collaborative research agreement.

Many collaborative research agreements are signed between a State research organisation and an industry partner. A programme of collaborative research may be wholly funded by the industry party which meets the full cost of carrying out the programme or may be funded partly by the State research organisation and partly by the industry party.

A collaborative research agreement is a contract which governs the terms under which this research programme will be conducted. The content of this agreement will have to be adapted depending on the specific circumstances of each case.

When negotiating a collaborative research agreement, the most important principle is to be clear what each side is hoping to get out of the work. This will guide the negotiations between the two parties as to the best approach to be taken.

Several aspects will have to be taken into account: the definition of the scope of work, the limitation of liability, the access to the arising intellectual property, the licensing background intellectual property, the academic rights, etc.

Our law firm can provide you with valuable advice on all these aspects.

Administrative Patent Litigation

With the collaboration of patent agents, which provide us with their technical expertise, we can file or defend against oppositions before the INPI.

The opposition makes it possible to request the total or partial revocation of a granted French patent. This procedure must be initiated with the INPI and leads, if the opposition is deemed well-founded, to the total or partial revocation of the patent or to its maintenance in a modified form (taking into account the modifications made by the holder of the patent during the proceedings).

Trial Patent Litigation and Arbitration

We represent clients, both as plaintiffs and defendants, it being said that we litigate only before the Paris Court (tribunal judiciaire) which is the only court in France which has jurisdiction to judge cases of infringement of French patents or European patents designating France.

For each patent case, we will form a team with highly-skilled patent agents who perfectly understand our clients’ technologies and the relevant prior art. Together, we will develop innovative and winning litigation strategies.

Moreover, since patent disputes in Europe are often fought on multiple fronts, with numerous litigations proceeding simultaneously in different European countries, we will work with our network of specialized patent litigators locted in Germany, the Netherlands, etc. and we will coordinate strategy to ensure success and efficiency.

We can also represent clients in both international and domestic patent arbitrations, it being said that patent infringement, validity and enforceability are arbitrable under French law with certain limitations.

Traditionally, arbitrations involving patents most commonly arose from breaches of license agreements and technology transfer agreements, where the agreement to arbitrate is set forth in a dispute resolution clause. Patent infringement/validity disputes do notarise from any contract. However, the lack of a prior agreement to arbitrate is not an impediment to arbitration since parties can agree to submit their patent infringement dispute to arbitration at any time.

The main advantages of arbitration can be summarized as follows:

  • possibility for the parties to choose one or more arbitrators with the required technical skills;
  • possibility for the parties to choose an arbitrator of nationality and culture other than those of the parties;
  • possibility for the parties to choose the language and place of the arbitration proceedings, in order to ensure that no party benefits from proceedings taking place in their country;
  • possibility of resolving global disputes in a single proceeding, thus eliminating the need of multiple lawsuits in several countries;
  • confidentiality of the arbitration.

Finally, the foremost advantage of international arbitration over litigation is that an international arbitral award is enforceable virtually worldwide, while a judgment from a national court is oftentimes only enforceable in the nation that issued it. This fact is due to an important treaty, the Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the New York Convention). There are more than 170 parties to the New York Convention, and its article III requires parties to “recognize arbitral awards as binding and enforce them.”