Cabinet Beau de Loménie
The so-called « Macron » law n°2015-990 of 6th August 2015, aiming to improve economic growth, activity and equal opportunities was published in the Official Journal of the French Republic on 7th August 2015 and, in so far as no transitional provisions apply, this law entered into force on 8th August 2015.
The law introduces a new provision having an impact on employee inventions. In effect, the law creates an obligation for the employer to inform the employee, who has made an invention belonging to the employer, of the filing of a patent application (or a utility model) and the grant thereof.
Thus, the modified first paragraph of Article L.611-7 of the French Intellectual Property Code reads as follows:
« 1. Inventions made by a salaried person in the execution of a work contract comprising an inventive mission corresponding to his effective functions or of studies and research which have been explicitly entrusted to him, shall belong to the employer. The employer shall inform the salaried person who has made such an invention whenever the latter is the subject of an application for an industrial property right, and also, where applicable, at the time of grant of such a right. The conditions under which the salaried person, who has made an invention belonging to the employer, shall enjoy additional remuneration shall be determined by the collective agreements, company agreements and individual employment contracts. »
This provision does not throw into question the right to additional compensation rendered obligatory by the law of 26th November 1990, nor the conditions in which the employee may benefit from the same as defined by branch agreements.
Furthermore the law has no direct impact on the level of the additional compensation. However, the law could have an impact on the calculation of the statute of limitations relating to actions that could be brought by an employee inventor against his employer in order to obtain additional compensation. In effect, it follows from Article 3245-1 of the French Labor Code that a time limit of three years applies for such actions, counting from the date upon which the employee knew or should have known sufficient details to enable him to make his claim for additional compensation before the courts. At the present time, the case law has not reached a stable position on this matter and different starting points have been held to apply, based on different criteria (for example, the date of notification to the employee of the employer's evaluation of the additional compensation to be provided). In case law it has however generally been considered that the time limit is not running with respect to the employee if the latter has not been fully informed of all of the details necessary for the calculation of the additional compensation (for example, if the employee is not informed of the effective commercial use of the invention).
Given that the law explicitly foresees that the employee will henceforth need to be informed of the date of filing of a patent application in relation to an invention that he has made and, where applicable, the grant of the corresponding patent, it seems reasonable to consider that the time limit for bringing an action is not running for an employee if he is not at the very least provided with these specific items of information. The date upon which the employee is informed of these events could constitute the starting point for the period during which an action may be brought, if no event, likely to influence the calculation of the additional compensation, risks occurring later (for example, in the absence of commercial use of the patented invention).
In view of this probable effect of the Macron law on the computation of the time limit for bringing actions, employers will from now on need to be particularly vigilant concerning the respect of this obligation to inform their employee inventors of the filing and granting of patents.