Our areas of expertise

Development, contracts - Patents -

A patent can be personally exploited by its holder, the methods and/or devices covered by the invention then being implemented and/or manufactured and/or sold by the holder.

The holder of a patent can also transfer or license the patent.

Transferring a patent or a patent application makes it possible to transfer ownership of the rights attached to these Industrial Property titles to the benefit of one or several third parties; the transfer can be total or partial. Thus, a partial transfer of a patent or a patent application can mean:

• limitation of the transfer of the rights related to the patent in space, the transfer only being valid for a limited number of countries in which the patent is in force (for example, the transfer can thus only concern European countries, the patent holder keeping his rights for the other countries in which the patent is in force);

• limitation of the transfer of rights related to the patent to certain applications of the invention claimed in the patent;

• limitation of the transfer of rights related to the patent to a type of exploitation: the transfer can thus pertain only to the manufacturing of the product covered by the patent.

Licensing a patent or patent application consists of allowing a third party, who becomes a "licensee", to totally or partially exploit this patent or patent application, generally in return for financial compensation which may consist of royalties and/or a lump sum. The patent license can thus be compared to a rental in that the patent holder maintains ownership of the rights attached to this patent.

Licensing a patent or patent application can in particular be:

• exclusive or non-exclusive, exclusivity assuming that the license is only granted to a single person over a given territory and for determined applications; and/or

• limited in space as in the case of a transfer; and/or

• limited to certain acts of exploitation of the invention covered by the patent, such as manufacturing or marketing.

Given the commercial stakes and legal rules unique to these transfer and license operations, it is advisable to prepare the patent or patent application transfer and license agreements with the utmost care, and the help of a professional, such as an Industrial Property attorney, in performing this task is strongly recommended.