If this is not clearly stated in the licence agreement, the case law considers that the licensee benefits from all the rights associated with the patent in the territory for which the patent is licensed. If the Licensor`s business is sold to a third party, the license agreement is automatically assigned to the Buyer and in principle continued in accordance with its terms. What effect does the termination or expiration of a licence agreement have on a sub-licence granted by the licensee in the absence of a contractual provision dealing with this issue? Would a contractual provision dealing with this issue be enforceable in both cases? Restrictions on active sales to customers that one party has reserved for itself or that it has transferred to its other counterparties are permitted, unless such restrictions apply to resale by the other party`s customers. There can be no restrictions on passive sales. Exclusive agreements leading to absolute territorial protection are prohibited. For comprehensive advice on licensing in France or if you need legal assistance in drafting a license agreement in France, please contact the experienced specialists at IQ Decision UK. The contacts are listed on the website. Unless otherwise provided in the Agreement, the Licensee who has been granted an exclusive right may initiate infringement proceedings if the Owner does not initiate such proceedings after prior written notification to the owner of the infringed right. In particular for patents, the same rule applies to the holder of a compulsory or automatic licence. There are no legal restrictions on the return policy.

The parties are free to decide how they want to deal with these issues in the license agreement. In accordance with Article 5 of Regulation (EU) No Directive 316/2014 of 21 March 2014 and the Guidelines for the application of Article 101 TFEU to categories of technology transfer agreements, exclusive re-licensing obligations for separable improvements (grant of an exclusive licence to the licensor or assignment to the licensor of the rights associated with those improvements) are excluded from the block exemption, even if the licensor provides consideration for the acquisition of the improvement or for the acquisition of an exclusive licence. However, the existence and amount of such a consideration may be a relevant factor in the context of a case-by-case assessment under Article 101 TFEU, since a readmission obligation entered into for examination is less likely to constitute a negative incentive for the licensee to innovate. What impact does the invalidity or expiration of an intellectual property registration affect an associated license agreement in your jurisdiction? If the licence remains in effect, can royalties continue to be charged? If the licence does not remain in force, can the licensee compete freely? Non-compete obligations must be proportionate to their duration, geographical applicability and the scope of the activities covered. In distribution agreements containing a licence for intellectual property rights, a non-compete obligation would not be covered by the exemption provided for in Commission Regulation (EU) No 330/2010 of 20 April 2010 on the application of exemptions to vertical agreements where their duration is of indefinite duration or more than five years. In addition, a non-compete obligation applicable after the termination of a contract is valid only if it is necessary to protect the legitimate interests of the beneficiary in a proportionate manner and if the time and place of its performance are limited. Under the above-mentioned EU Regulation, a non-compete obligation after termination would only benefit from the exemption if it is essential to protect the know-how transferred from the supplier to the buyer, is limited to the point of sale from which the buyer operated during the term of the contract and is limited to a maximum period of one year. A Licensor has the right to contractually restrict the disclosure or use of trade secrets and know-how by Licensee during and after the term of the contract. A trademark exists only if it has been properly registered and therefore cannot be validly licensed if it is not registered. Nothing would prevent the parties from entering into a license agreement for a trademark application (i.e., a trademark that has been applied for but has not yet been registered), but such a license only takes effect when the trademark has been registered, meaning that no third party has objected to the registration of the trademark within two months of the publication of the trademark application. commerce.

It is therefore highly discouraged to license a trademark that is not registered or that is the subject of a trademark application. The license agreement is a reliable pillar for companies. Today, it is difficult to imagine a transfer of rights to an TM or a patent or software without a corresponding document. When a company uses an intellectual product for the purpose of generating revenue, a licensing agreement is essential. There are no specific restrictions against a foreign licensor who enters into a licensing agreement without establishing a subsidiary or branch in France. A license agreement can be freely concluded between a foreign licensor and a French licensee and is subject to French law. Such an imbalance could lead to the nullity of the agreement and would risk being sanctioned by the Ministry of the Economy, responsible for monitoring fairness in contractual and commercial relations and punishing abusive practices (Article L. 442-6 of the French Commercial Code). The balance between the rights and obligations of the parties is the first norm to be taken into account. Unjustified discrimination between licensees may also constitute an abuse of a dominant position or a collusive agreement and may also be sanctioned under Article L442-6 of the French Commercial Code. In the event of termination or expiration of a licence agreement, the licensee may compete freely, unless the licence agreement provides for a post-contractual non-compete obligation (which must comply with legal and judicial requirements; see questions 30 and 31).

Finally, the non-renewal or termination of a license relationship may be in accordance with the terms of the agreement (non-renewal does not require just cause, but early termination unless the agreement provides for termination for convenience), always provided that the termination or non-renewal is in writing and that the notice period is reasonable. Article L442-6 I 5 ° of the French Commercial Code sanctions the abrupt termination of an existing business relationship and requires a prior written termination “sufficient” to give the licensed party sufficient time to find other sources of business. French courts have not extended the application of laws on commercial agencies that contain rights or remedies or provide compensation in the event of termination or non-renewal of license relationships. French legislation does not directly regulate the creation or conditions of an international licensing relationship. No special restrictions apply and the parties are free to determine the terms of their relationship, whether national or international, subject to the applicable general contractual rules. Are there any implied obligations imposed by law or a court in your jurisdiction that may affect an international licensing relationship, such as. B, obligations of good faith or fair trade, the obligation to act appropriately in the exercise of rights or to request a good reason for termination or non-renewal? Such an agreement must also be registered in the National Patent Register of the National Institute of Intellectual Property (INPI) in order to be enforceable against third parties (Article L. .

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