The role of the sole agent of state-owned bodies (e.g. public universities, public hospitals,...) in situations of co-ownership of property resulting from research and development (R&D) has been extended in France. Law No. 2019-486 on growth and transformation of enterprises, i.e. "PACTE" Act, was adopted through its Decree No. 2020-14, on 13 January 2020
The Decree, applicable as from 16 January 2020, replaces prior legal framework and eases the exploitation by private organizations of such property developed by or co-developed with state-owned bodies.
When an invention is developed by a State agent, the relevant governing state body is in charge of the monetization of the invention in the private sector. The number of state-owned entities (e.g. several universities) involved in the development of such invention often complicates monetization.
In the past, a sole agent was appointed by the state-owned bodies on an invention-by-invention basis. This sole agent had limited powers: it was in charge of filing the sole priority patent application and, of its exploitation.
The new provisions widen the scope of application beyond inventions to include any property arising from state-owned organizations’ research missions. Technical knowledge, computer programs, protectable data bases, and protected know-how generated by their R&D can now be included as well as inventions.
Regarding the exploitation of the co-owned property arising from R&D involving several state-owned entities, the sole agent is appointed jointly by the state-owned parties for the management and monetization of any property developed. Any invention or other property generated by any employee’s R&D shall be notified to the designated sole agent.
The sole agent is in charge of proceeding with the necessary undertakings to legally protect the resulting property, through the filing of industrial property rights applications in France and abroad.
Negotiating and executing any agreement with respect to the confidentiality, exploitation and ownership of the results also comes under the responsibility of the sole agent. The profits drawn from the exploitation of the results are equally split between state-owned co-owners by the sole agent.
Further, the sole agent, to which any further mission or obligation related to the property can be assigned by virtue of contracts, is financially responsible for any fees incurred.
The enhanced scope of the role of the sole agent has direct implications in state/private co-research and co-development agreements. Private companies have one single interlocutory for development or exploitation of results through negotiation and execution of no-disclosure, co-ownership, licensing or assignment agreements.
Nonetheless, at this time, it remains unclear to what extent the regulatory-provided duties can be expressly excluded or limited by contract.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.