In France, the first law protecting inventions dates from January 7, 1791. It follows a report by our dear knight Stanislas de Boufflers dated December 30, 1790, entitled “Rapport relatif aux encouragements et aux privilèges à accorder aux inventeurs de machines et de découvertes industrielles” (Archives parlementaires, 1 ère série, t. XXI, p. 721-732 [30 December 1790]).
Patent law had thus existed for more than a century when the First World War broke out.
While searching for case law in the Annales de la Propriété Industrielle, a judgment of the Civil Court of the Seine dated March 27, 1931, caught my attention because it combined two of my interests: history and employee creations.
The French inventor of a shell rocket (say Ial rocket) on which he had a patent “hastened, in a feeling of high patriotism” to make it available to the French army by selling the rockets at the cost price of manufacture, and without reserving the rights of the inventor.
The Tribunal noted that the Minister of War had undertaken to repair the damage caused to the inventor.
Because of the Minister’s inaction, the inventor’s successors sued the Minister of War for damages.
What did the Minister do? He argued that the patent was invalid for lack of novelty and that the undertaking given was invalid because of an error in the validity of the patent.
The Court rejected this argument, noting that “even if he [the Minister] were legally justified in maintaining that he could only have been obliged to stipulate a royalty for a null patent, in order to repair the damage that, due to the circumstances, he should not have caused, he had entered into a contract with the inventor under common law, which had not been entered into without legitimate cause or under the influence of an error.
The inventor’s morals and rights are therefore fortunately preserved!
Let’s jump ahead to 2019.
Nowadays, article L. 613-20 of the Intellectual Property Code provides for the possibility for the State to expropriate, in whole or in part, inventions for the needs of national defense. In the absence of an amicable agreement, the expropriation compensation is set by the High Court.
As for the argument aimed at challenging the validity of the patent by the person owing a payment obligation, it is frequently invoked in disputes concerning employee inventions by the company that owns the patent. As in 1931, this argument is often rejected. The Paris Court of First Instance thus ruled that “The VYGON company cannot claim, for the sole purpose of avoiding payment of the fair price, that its invention was within the reach of any person skilled in the art, even if, having understood that the invention suffered from a lack of inventive activity, it abandoned its European patent application and allowed the French patent to lapse by ceasing to pay the annual fees. Indeed, it took advantage of this invention in its communication and with its customers and set it against the competition” (TGI Paris, March 31, 2016, RG 15/07035).
Jérôme TASSI
Avocat (Paris Bar)
Source : Tribunal civil de la Seine, March 27, 1931, Ann. 1932, p.341-342