Intellectual property clause (employment) Q&A: France

COUNTRY Q&A

Reproduced from Practical Law, with the permission of the publishers. For further information visit uk.practicallaw.thomsonreuters.com

byMarie Fillon and Louis de Chezelles, Dechert (Paris) LLP

Status: Law stated as at 30-Jun-2020 | Jurisdiction: France

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France speciﬁc information concerning the key legal and commercial issues to be considered

when drafting an IP clause for use in the terms of employment between the employer and

employee. See Standard clause, Intellectual Property clause (employment): International, with

country speciﬁc drafting notes and Standard document, Terms of employment: International.

This Q&A provides country-speciﬁc commentary and forms part of Cross-border employment.

IP clause

1. Is a clause such as Standard clause,

Intellectual property clause (employment):

International included in the terms of

employment between employers and

employees in your jurisdiction where the

employer wants to protect any IP created

by an employee?

The French Intellectual Property Code stipulates a

set of legal principles (some of them of public policy,

which means that they cannot be overridden by any

contractual agreement between the parties) with regard

to ownership of certain IP created by an employee.

However, it is common practice to provide expressly in

the employment contract for ownership of IP, to protect

the employer’s ownership of any IP created by an

employee.

Inventions

2. In the absence of a speciﬁc provision in

the employee’s terms of employment, who

owns and can patent any invention that

the employee creates during the course of

their employment?

Under French law, either the employer or the employee is

deemed to own the inventions created by the employee

during the course of their employment, depending on

the public policy criteria set out in L. 611-7 of the French

Intellectual Property Code. Any contrary terms in the

employment contract would be null and void.

Owner of invention created by employee

in course of employment

Ownership of an invention will depend on the scenario

into which it ﬁts:

• If the invention is created by an employee in the

course of their employment and in connection with

the inventive task that was entrusted to them in view

of the functions deﬁned in their terms of employment

(“inventions under mission”), the employer is the

owner of the invention.

• If the invention is created by an employee in

the course of their employment but outside the

professional duties deﬁned in their terms of

employment (“inventions outside mission”), the

employee is deemed the owner of the invention.

However, on payment of a fair price (see Question32),

the employer can claim ownership of inventions

outside mission when those inventions have been

created by the employee:

– during the performance of their functions;

– within the employer’s ﬁeld of activity;

– by knowledge or use of documents or studies

belonging to the employer; or

– with materials, equipment or tools belonging to the

employer.

(Article L. 611-7, Intellectual Property Code.)

Who can patent the invention

The owner of the invention is entitled to patent the

invention. Therefore:

• The employer can patent the following inventions

(the employee’s name must appear on the patent

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Intellectual property clause (employment) Q&A: France

application, without the mention of their name giving

the employee any intellectual property rights to the

invention, unless the employee expressly requests

that their name not appear on the patent application):

– inventions under mission; and

– inventions outside mission over which the employer

claimed ownership.

• The employee can patent inventions outside mission

over which the employer could not or did not claim

ownership.

3. Would your answer to Question 2 above

be different if the employee created the

invention outside of working hours and/or

using their own premises, resources and

equipment?

If the invention is created outside working hours and/

or using the employee’s own premises, resources and

equipment, the invention may still be classiﬁed as an

invention outside mission and therefore claimed by the

employer, in particular if it is in the employer’s ﬁeld of

activity.

Nevertheless, the terms of employment should expressly

specify the employee’s function and duties and it

should be clear from the wording used that part of the

employee’s duties is to make inventions.

Owner of invention created by employee

outside employment

The employee is the owner of the inventions created

outside employment that do not fulﬁl the criteria set out

by Article L. 611-7 of the Intellectual Property Code (see

Question 2); the employer does not have the right to

claim ownership over these inventions.

4. Is there any wording that should be

included to ensure that any statutory

requirements are met for the employer

to be the owner of an invention by their

employee in your jurisdiction?

No speciﬁc wording is needed in relation to the

ownership of inventions under mission. Nevertheless,

the terms of employment should expressly specify the

employee’s function and duties and it should be clear

from the wording used that part of the employee’s

duties is to make inventions.

For the employer to own inventions outside mission, it

must both claim ownership and pay a fair price to the

employee. This can be effected by including wording in

the IP clause along the lines of the following:

“Invention outside mission: for inventions, patentable or

not, realised by you outside your professional duties, the

Company shall have an option to claim ownership of all

or part of the rights resulting from the patent when such

inventions have been realised by you:

- during the performance of your functions; or

- in the ﬁeld of activity of the Company; or

- by knowledge of documents or studies belonging to

the Company or with material or installations belonging

to the Company.”

For the employer to own any invention created by an

employee, other than an invention under mission or an

invention outside mission, the employer can arrange for

an express assignment in writings.

5. In the event of a dispute over ownership

of an invention, and in particular whether

it was created during the course of

employment, what would the courts look

at to determine whether the employer is

entitled to the invention?

French courts would refer to the terms of the employment

contract to identify the employee’s mission and

professional duties or functions, and particularly whether:

• The employee has an express inventive mission

(that is, they were hired for the express purpose

of inventing, or part of their duties was to make

inventions).

• The employee’s functions or duties are related to

research and development activities.

Absent an inventive mission or R&D functions, the

courts would have to consider whether the invention

meets the criteria for employers to be able to claim

inventions outside mission, and whether a fair price was

paid by the employer for the invention.

6. In the absence of a speciﬁc provision

in the employee’s terms of employment,

who will own the copyright in anything

that the employee produces during their

employment?

Under Article L. 111-1 of the French intellectual property

code, if there is no agreement to the contrary, the

This means that, if there isn’t a speciﬁc provision in

the employee’s terms of employment, the copyright

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Intellectual property clause (employment) Q&A: France

in anything that the employee creates during their

employment will be owned by the employee.

7. Would your answer to Question 6 above

be different if the employee produced

the copyright work outside of working

hours and/or using their own premises,

resources and equipment?

No; the copyright created by an employee outside their

employment is owned by the employee.

Trade mark

8. In the absence of a speciﬁc provision in

the employee’s terms of employment, who

is entitled to apply to register any trade

mark that the employee creates during

their employment?

If there is no speciﬁc provision in the employee’s terms

of employment:

• An employee who creates a trade mark composed of

graphic and/or ﬁgurative elements owns the copyright

on those elements and may therefore apply to register

them as trade marks.

• An employee who creates a verbal trade mark is the

owner of the potential copyright in it, and may apply

to register it as a trade mark.

(Article L. 131-3, Intellectual Property Code; Cour de

cassation, Com, 16 February 2010, No 09-12.262.)

However, in the event that an employee applies to

ﬁgurative elements similar to the employer’s name and/

or a trade mark owned by the employer, the employer

may bring an action for infringement of its rights before

the courts.

Deﬁnitions

9. Is the deﬁnition of “Employment IPRs”

in Standard clause, Intellectual property

clause (employment): International valid

in your jurisdiction?

The deﬁnition of “Employment IPRs” in Standard clause,

Intellectual property clause (employment): International

be valid in France (although it should be noted that

some of those rights included in the deﬁnition of

Employment IPRs will need to be dealt with in a

particular way to ensure their validity, as some of the

rights contained in the Employment IPRs deﬁnition will

be owned from the start by the employer, while others

are owned by the employer if the employee expressly

assigns them to the employer).

10. Is it advisable in your jurisdiction to

include in the deﬁnition of “Employment

IPRs” the IPR that may not necessarily

come into existence whilst the employee

is carrying out their regular duties

but nonetheless arises during their

employment?

Yes, it is advisable to include this type of IPR in the

deﬁnition of “Employment IPRs”.

11. Is the deﬁnition of “Intellectual

Property Rights” in Standard clause,

Intellectual property clause (employment):

International valid in your jurisdiction?

The deﬁnition of “Intellectual Property Rights”

in Standard clause, Intellectual property clause

(employment): International is valid in France. However,

certain rights listed in this deﬁnition do not arise in

France (see Question 12).

12. Do all the rights listed in the deﬁnition

of “Intellectual Property Rights” in

Standard clause, Intellectual property

clause (employment): International arise

in your jurisdiction?

The following rights listed in the deﬁnition of “Intellectual

Property Rights” in Standard clause, Intellectual property

clause (employment): International are not recognised in

France:

• Rights in get-up.

• Goodwill.

• Topography rights.

13. Is it permissible to include rights that

will subsist in the future in the deﬁnition

of “Intellectual Property Rights”?

It is permissible to include rights that will subsist in the

future in the deﬁnition of “Intellectual Property Rights”.

However, an assignment of rights to copyright in

future works is not permissible under Article L. 131-1

of the Intellectual Property Code, the language in the

assignment provision of the employment contract

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Intellectual property clause (employment) Q&A: France

should provide that the assignment of future rights to

work and not as of the date of the employment contract.

This approach has been validated by case law (Cour de

cassation, Civ 1st, 4 February 1986), and it is common

practice to include the wording in employment contracts

(see Question 17).

14. Are there any other rights in your

jurisdiction that should be included in the

deﬁnition of “Intellectual Property Rights”

in Standard clause, Intellectual property

clause (employment): International?

In France, the following other rights could also be

included in the deﬁnition of “Intellectual Property

Rights” in Standard clause, Intellectual property clause

(employment): International:

• Supplementary protection certiﬁcates.

• Utility models.

• Rights related to copyright (“droits voisins”).

• Soleau envelopes (this is a French system to ascertain

the date of an invention, idea or creation of the work;

it involves putting evidence in a sealed envelope to

demonstrate the applicant’s knowledge or creation

of the work at the date of stamping, without any

disclosure of the content).

• Sui generis database rights.

Assignment of IPR

15. In your jurisdiction, can the IP rights,

inventions and materials set out in

Standard clause, Intellectual property

clause (employment): International:

clause 1.2 be stated to automatically

belong to the employer, without any

further steps being taken by either party?

No. Intellectual property rights cannot be stated as

belonging automatically to the employer, except for:

• Inventions under mission (see Question 2).

• Software created by the employee in the course of

their employment (Article L. 113-9, French Intellectual

Property Code).

An agreement to transfer intellectual property rights

must include express language that refers to the speciﬁc

IP being assigned to the employer (see Question 17). It

may also be advisable to obtain conﬁrmatory agreement

to assignment from the employee for those Employment

IPRs which have not yet arisen at the date of the

agreement, following their creation (see Question 17).

16. Can the employer create an effective

assignment of the Employment IPR

in its terms of employment with its

employees as set out in Standard clause,

Intellectual property clause (employment):

International: clause 1.3(a)?

The employer can create an effective assignment of the

Employment IPR in its terms of employment with its

employees as set out in clause 1.3(a).

17. Is the language used at Standard

clause, Intellectual property clause

(employment): International: clause 1.3(a)

sufﬁcient to constitute an assignment

from the employee to the employer of all

Employment IPRs, present and future? If

not, how does this need to be amended in

order to be valid and enforceable in your

jurisdiction?

Assignment of present Employment IPR

The use of the expression “hereby assigns” is sufﬁcient to

constitute an assignment of existing Employment IPRs.

However, the valid assignment of some types of

intellectual property requires mandatory explicit

mention to be included in the assignment clause

(ArticleL. 131-3, French Intellectual Property Code; Cour

decassation, Civ 1st, December 16, 1992, No 91-11.480).

A valid assignment of copyright must expressly mention:

• The assigned rights.

• The assigned territory (this may be global).

• The duration of the assignment (this may be for the

whole duration of intellectual property rights as

deﬁned by applicable laws, including any future term

extension).

With regards to patents, the priority right must be

mentioned expressly to be validly covered by the

assignment.

Standard clause, Intellectual property clause

(employment): International: clause 1.3(a) is not

therefore sufﬁciently detailed to create a valid

assignment of copyright or patent rights, unless these

additional details are included.

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Intellectual property clause (employment) Q&A: France

Assignment of future Employment IPR

Future Employment IPRs can be assigned, except

for works protected by copyright (see Question 13).

Therefore, the use of the expression “hereby assigns”

will be valid for assignment of future Employment IPRs,

except for future copyright.

Regarding future copyright, the following expressions

can be used to create a valid future assignment (see

Question 13):

• “Agrees to assign by way of future assignment”.

• “Assigns as of their creation”.

It would however be advisable to include:

• A provision that requires the employee to enter into

a subsequent and/or conﬁrmatory agreement at the

time of the assignment of future Employment IPRs, in

particular copyright IPR.

• A provision that requires the employee to enter into

any necessary subsequent agreements, or to provide

any required assistance, that would facilitate, or that

would be required for, the transfer of legal rights on

Employment IPRs to the beneﬁt of the employer (the

wording of clause 1.7 would be sufﬁcient here, as long

as the mention of waiver of all moral rights is deleted).

As is the case for present Employment IPRs, the valid

assignment of future copyright and patent Employment

IPRs needs speciﬁc additional wording (see above).

18. Is the concept of the employee holding

any IP rights, inventions or materials “on

trust” for the employer, if they do not

automatically vest in the employer as set

out in Standard clause, Intellectual property

clause (employment): International: clause

1.3(b), recognised in your jurisdiction?

This concept is not recognised in France.

19. If holding “on trust” is not recognised

in your jurisdiction, is there any equivalent

wording or concept that could be used

in Standard clause, Intellectual property

clause (employment): International:

clause1.3(b) to increase the protection

available to the employer in respect of

the IP rights, inventions and materials

that have not automatically vested in the

employer and that are yet to be assigned

to them?

There is no speciﬁc wording or concept under French

law that could be used to increase the protection

available to the employer in respect of IP rights,

inventions and materials that have not automatically

vested in the employer. (However, see Question 17

on the recommendations for wording to help secure

assignment of future rights.)

Obligations on employees

20. Are the obligations on the employee

as set out in Standard clause, Intellectual

property clause (employment):

International: clause 1.4 valid and

enforceable in your jurisdiction?

The obligations on the employee as set out in Standard

clause, Intellectual property clause (employment):

International: clause 1.4 are valid and enforceable in

France.

21. Is the speciﬁc conﬁdentiality

obligation as set out in Standard clause,

Intellectual property clause (employment):

International: clause 1.4(d) recommended

in your jurisdiction so as to maintain the

ability for an invention to be patentable?

The speciﬁc conﬁdentiality obligation as set out

in Standard clause, Intellectual property clause

(employment): International: clause 1.4(d) would be

a minimum in France to maintain the ability for an

invention to be patentable. It would, however, be

advisable to include wider and stronger conﬁdentiality

language, or a separate clause setting out the terms

of conﬁdentiality obligations, which would include a

speciﬁc deﬁnition of what is considered “Conﬁdential

Information”, in the employment agreement to take into

account the novelty requirement for patentability of

inventions.

Moral rights

22. Does your jurisdiction recognise

moral rights? If not, is there an equivalent

personal right that accrues in your

jurisdiction to the author of a copyright

work?

Certain moral rights for the author of a copyright work

are recognised in France.

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Intellectual property clause (employment) Q&A: France

23. If the answer to the question above

is “yes”:

• How are these rights deﬁned?

• What do they comprise?

• If copyright is registrable in your jurisdiction, can

these rights be registered or recorded against

the copyright work?

How are moral rights (or equivalent)

deﬁned

The moral rights of the author of a copyright work are

deﬁned in Articles L. 121-1, L. 121-2 and L. 121-4 of the

Intellectual Property Code.

The moral rights of performers are deﬁned in

ArticleL.212-2 of the Intellectual Property Code.

What do moral rights (or equivalent)

comprise

Moral rights comprise:

• The right to the integrity of the work, which allows the

author to prevent and oppose changes with regard to

the form of their work.

• The paternity right, which is the right to be associated

with the work by name (or pseudonym) and as the

author, or to remain anonymous.

• The right of disclosure, which enables the author solely

to decide whether or not to disclose their work to the

public, and under what conditions (Article L. 121-2).

• The right of repentance, which allows the author to

modify their work after publication, and the right of

withdrawal, which allows the author, after the work’s

publication and in the event they assigned their rights

to exploit the work, to terminate that assignment

unilaterally (Article L. 121-4).

Moral rights (or equivalent) registered or

recorded against copyright of work

Moral rights are not registered nor recorded in any form

in France.

24. In your jurisdiction, do moral rights

(or equivalent) arise automatically upon

creation of the copyright work, or must the

author assert them in order for them to

take effect?

Moral rights arise automatically on creation of the

rights are not recorded nor registered in any form,

they will have little practical effect unless the author

asserts them (for example, in the context of an action for

infringement of moral rights).

25. Can present moral rights (or the

equivalent) be waived in your jurisdiction

as set out in Standard clause, Intellectual

property clause (employment):

International: clause 1.5?

Under French copyright law, present moral rights

cannot be waived, in whole or in part. Any provision

oragreement to the contrary would be deemed null

andvoid.

26. Can future moral rights (or the

equivalent) be waived in your jurisdiction

as set out in Standard clause, Intellectual

property clause (employment):

International: clause 1.5?

Under French law, future moral rights cannot be waived,

in whole or in part. Any provision or agreement to the

contrary would be deemed null and void.

27. Who can waive moral rights (or the

equivalent) in your jurisdiction?

N/A.

28. In your jurisdiction, if the copyright

owner can waive moral rights (or the

equivalent), do they need to:

• Obtain the author’s consent, or

• Give the author prior notice, before doing so?

N/A.

29. Can moral rights (or the equivalent) be

licensed or assigned in your jurisdiction?

Under French copyright law, moral rights cannot

be licensed nor assigned. Any contrary provision or

agreement would be null and void. However, moral

rights are imprescriptible (that is, they do not lapse for

any reason) and they may be:

• Transferred to the author’s heirs after the author’s

death.

• Exercised by a third party in accordance with

testamentary provisions (when the author of a

copyrighted work dies and does not have any heirs,

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they may authorise in their will a third party to

exercise their moral rights on such work).

30. If moral rights (or the equivalent

in your jurisdiction) can be licensed or

assigned:

• Is the author the only party entitled to license

or assign them or (if not the same person) is the

• If the copyright owner is also entitled, do they

need to obtain the author’s consent, or give

them prior notice, before granting the licence or

making the assignment?

• Are any terms or conditions typically placed

upon the third party receiving the beneﬁt of any

such licence or assignment?

N/A.

Compensation

31. In your jurisdiction, is the employee

entitled to any compensation from the

employer if the employer registers or

exploits (by licensing or assigning to third

parties, or granting security over) any IP

that has been created by the employee

during their employment?

In France, employees are entitled to additional

remuneration for any invention under mission

(ArticleL.611-7, Intellectual Property Code).

Employees must also receive a “fair price” for any

invention outside mission over which the employer

claimed ownership (see Question 2 and Question 4)

(Article L. 611-7, French Intellectual Property Code).

Employees are also entitled to compensation for

assignment to the employer of any IP that does not fall

under the two categories above.

32. If so, what and how much compensation

is the employee entitled to in your

jurisdiction?

Inventions under mission

Additional remuneration for inventions under mission

can be either:

• Royalties based on the revenues generated by the

invention.

• One or several lump sums.

The payment conditions and amounts are set out in:

• The applicable collective bargaining agreement.

• The company policies.

• The employment contract.

Other types of invention

The compensation for an assignment to the employer

of any IP created during the employment (whether

the “fair price” for inventions outside mission, or any

other assignment price) can be determined by the

parties.

The only legal constraint relates to the assignment of

• In principle, the author’s remuneration should be

proportional to the revenues earned by the employer

from the exploitation of the corresponding work.

• As an exception, in some limited cases (including the

assignment of rights in software) the remuneration

may be a lump sum (Article L. 131-4, French Intellectual

Property Code).

The rights of representation and reproduction may

be assigned for free (Article L. 122-7, Intellectual

Property Code). However, this carries a high risk of

the assignment being deemed a donation (in which

case, the courts will pay very close attention to the

author’s capacity to assign their IP rights for free; if the

judges have any doubt as to the author’s capacity and

awareness, the assignment/donation may be deemed

null and void (Paris Court of Appeal, 25 November 2005,

No. 04/02005)).

33. In your jurisdiction, can a clause such

as Standard clause, Intellectual property

clause (employment): International:

clause 1.6 be included in the terms

of employment to establish that no

compensation other than that contained

in the agreement will be payable to the

employee in respect of any IP rights?

This clause may be included, but in practice it will

have little effect, as the requirements for additional

remuneration for inventions under mission, the fair

price for inventions outside mission, and the agreed

assignment price for other inventions are all provisions

that are of public policy, so they apply regardless of

contractual provisions. If these public policy provisions

are not included expressly in the terms of employment,

they will be carved out by the wording of “except as

provided by law”.

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Intellectual property clause (employment) Q&A: France

Further assurance

34. Is the undertaking given in Standard

clause, Intellectual property clause

(employment): International: clause 1.7

valid and enforceable in your jurisdiction,

that is, an undertaking to execute all

documents and do anything to assist in

vesting the IP rights in the employer?

This clause is a typical provision in French employment

contracts. The authors are not aware of any case law

validating such a clause; however, there is no reason

why it should not be valid and enforceable in France,

except in relation to the waiver of moral rights (see

Question 25).

35. Is it permissible in your jurisdiction for

future assignments to be included in such

an undertaking as set out in Standard

clause, Intellectual property clause

(employment): International: clause 1.7?

Yes. Since the assignment of some future IP rights is not

permissible under French law, undertakings in relation

to future assignments are often seen in employment

contracts (see Question 17).

36. Is it usual in your jurisdiction for

the employer to agree to reimburse

the employee for expenses incurred

in complying with this undertaking as

set out in Standard clause, Intellectual

property clause (employment):

International: clause 1.7?

Yes, it is usual for the employer to reimburse the

employee for reasonable expenses incurred in complying

with this undertaking, as set out in clause 1.7.

37. Is the term “best endeavours” as

set out in Standard clause, Intellectual

property clause (employment):

International: clause 1.7 understood

in your jurisdiction? If not, is there an

alternative or equivalent concept?

The use of the term “best endeavours” would be

understood in France as meaning “best efforts”.

Assistance with infringement

claims

38. Is Standard clause, Intellectual

property clause (employment):

International: clause 1.8 permitted

and commonly included in terms of

employment with employees in your

jurisdiction to try to ensure that the

employee gives valuable witness evidence

as required by the employer in any IP

litigation that arises around the world,

even after their employment with the

employer has come to an end?

A clause such as clause 1.8 is permitted, and these

are commonly included in the terms of employment

in France. It is allowed based on the employee’s duty

of loyalty (Articles L. 1222-1 and 226-13, French Labour

Code; Cour de Cassation, 10 May 2006, No. 05-210); this

duty persists after termination of employment (Cour de

Cassation, 19 March 2008, No. 06-45322). However, in

practice it may be difﬁcult to enforce.

39. What are the main defences to

claims in your jurisdiction?

Main defences to copyright infringement

The main defences to copyright infringement are:

• Disputing the validity of the copyright.

• Disputing whether infringement occurred.

For example, the defendant may claim:

• Copyright invalidity (that the claimant’s work is not

“original” and therefore there is no copyright in the

work; a work is considered original if it reﬂects the

author’s creative spirit (Cour de Cassation, Civ 1st, 13

November 1973)).

• Copyright ownership (that the claimant does not own

the copyright over the work allegedly infringed, and

therefore does not have the standing to claim for

infringement).

• Absence of reproduction (that the defendant’s work

does not constitute a reproduction or imitation of the

work allegedly infringed (copyright infringement is

assessed by similarities and not by differences), or

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Intellectual property clause (employment) Q&A: France

that the allegedly infringing work was independently

created).

• Authorised use (French law provides for several

exceptions to copyright, listed in Article L. 122-5 of the

Intellectual Property Code (for example, among other

things for the purposes of research, education, parody

and private representation)).

Good faith is not an admissible defence to copyright

infringement in France. However, the defence of

independent creation puts the burden of proof of

independent creation (that is, having had no access

to the allegedly infringed work) on the defendant; as

a result, the burden of proof in this scenario has an

element of proof of good faith (Cour de cassation, Civ 1st,

May 16, 2006, “Djobi Djoba”; Cour de cassation, Civ 1st,

October 2, 2013 “Plus Belle La Vie”).

Main defences to design right

infringement

Similarly, the main defences to registered design right

infringement are:

• Disputing the validity of the design right/copyright on

that design.

• Disputing whether infringement occurred.

For example, the defendant may claim:

• Design right invalidity (that the claimant’s design

is not novel and does not have a unique character

(Articles L. 511-2-L. 511-5, French Intellectual Property

Code).

• Expiration of the registered design right (in France

a design may be registered for a ﬁve-year period,

renewable for a maximum duration of 25 years).

• Design right ownership.

• Absence of reproduction (that the defendant’s work

does not constitute a reproduction or imitation

of the work allegedly infringed (the infringement

assessment is based on the overall visual

impression) or that the allegedly infringing work

was independently created).

• Authorised use (French law provides for a few

exceptions to design right protection, listed

in Article L. 513-6 of the Intellectual Property

Code (for example, private use, teaching and

experimentation)).

Unregistered designs may be protected by copyright

if they fulﬁl the copyright protection criteria. If so, the

potential defences to unregistered design infringement

will be identical to the defences to copyright

infringement.

40. Is the defence that the allegedly

infringing work was independently

created, and that it is a mere coincidence

that it resembles closely the claimant’s

your jurisdiction (see Standard clause,

Intellectual property clause (employment):

International: clause 1.8)?

The defence that the allegedly infringing work was

independently created, and that it is a mere coincidence

that it resembles closely the claimant’s copyright work

or unregistered design, may be argued before French

courts (see Question 39). However, the defendant must

provide evidence that the allegedly infringing work was

independently created, and that it would have been

impossible for them to have had access to the allegedly

infringed work.

41. In practice, how difﬁcult would

Standard clause, Intellectual property

clause (employment): International:

clause1.8 be to enforce in your jurisdiction?

As there is little case law considering this type of clause

in France, it is uncertain how difﬁcult in practice it would

be to enforce.

Powers of attorney

42. Can the employee appoint their

employer as their attorney in Standard

clause, Intellectual property clause

(employment): International for the

purpose of executing any documents that

might be required in relation to the IPR

under this clause?

Although it may not be invalid, there would be a risk

of dispute regarding the legality of the employee’s

consent, due to the inherent inequality in the

employment contract. As a result, it would not be

advisable to do so.

43. Are there any formalities that must be

adhered to in relation to the creation or

execution of such a power of attorney to

ensure that it is valid and enforceable in

your jurisdiction?

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Intellectual property clause (employment) Q&A: France

In France, the formalities related to the creation or

execution of a power of attorney in labour law are

identical to those in civil law, and must fulﬁl the

requirements of: capacity, competence, authority,

means, precision and evidence.

In the event the employee appoints their employer

as their attorney, it would be unusual to require an

authenticated signature of an authentic act (through

notarisation). A delegation of power included in writing

directly in the employment agreement or by way of an

amendment to it would be sufﬁcient (and advisable, as

it would allow the employer to demonstrate and specify

the extent of the delegation of power, and to make it

enforceable against third parties).

Execution and other formalities

44. Do the terms of employment/

contract into which Standard clause,

Intellectual property clause (employment):

International is inserted need to be

executed in any particular manner in order

for the assignment set out in this standard

clause to be valid and enforceable in your

jurisdiction?

No.

45. If Standard clause, Intellectual property

clause (employment): International is

included in the employee’s terms of

employment/contract in your jurisdiction,

are there any other speciﬁc execution

or registration formalities or other

requirements that would be necessary for

this clause to be valid and enforceable?

No (except if, for example, the terms of employment

require conﬁrmatory assignment agreements to be

registered with trade mark ofﬁces for instance, in which

case, such steps would need to be taken).

General

46. Are any of the clauses set out in

Standard clause, Intellectual property

clause (employment): International

not legally valid and enforceable or not

standard practice in your jurisdiction?

The waiver of moral rights in clause 1.5 would not be

legally valid or enforceable in France (see Question 25).

47. Are there any other IP clauses that

would be usual to see in such standard IP

clauses and/or that are standard practice

to include in your jurisdiction?

No.

Contributor details

Marie Fillon, Lawyer

Dechert (Paris) LLP

E marie.ﬁ[email protected]

Areas of Practice: Intellectual property.

Louis de Chezelles, Lawyer

Dechert (Paris) LLP

E [email protected]

Areas of Practice: Intellectual property.