Intellectual property lawyer in Paris, patent law: Can software be patented?

Update: Nov. 2, 2022

 A lawyer specializing in patent and industrial property law informs you.


What inventions are not patentable?

According to L611-10 of the Intellectual Property Code: 

1. New inventions involving an inventive step and capable of industrial application shall be patentable in all fields of technology.

2. The following in particular shall not be considered as inventions within the meaning of the first paragraph of this Article

a) Discoveries and scientific theories and mathematical methods;

b) Aesthetic creations ;

c) Plans, principles and methods in the exercise of intellectual activities, in the field of gambling or in the field of economic activities, as well as computer programs;

d) Information presentations.

3. The provisions of paragraph 2 of this Article shall exclude the patentability of the elements listed in those provisions only to the extent that the patent application or patent relates to one of those elements as such.

4. Subject to the provisions of Articles L. 611-16 to L. 611-19, inventions relating to a product consisting wholly or partly of biological material, or to a process for the production, treatment or use of biological material, shall be patentable under the conditions laid down in paragraph 1.

Biological material is considered to be material that contains genetic information and can reproduce itself or be reproduced in a biological system.


In general, the criteria for patentability of computer inventions are the same as those for other fields of technology. However, there are specific considerations for computer inventions, notably whether an invention is considered pure software or whether there is sufficient interaction with the physical world for it to be considered a computer system or apparatus.

The following are some of the common patentability criteria for computer-related inventions:

Novelty: The invention must be new and not have been disclosed to the public before the patent application. This means that the invention must be considered completely new and original.

Inventive step: The invention must involve some inventive step beyond the mere application of well-known knowledge or techniques. The invention must involve a creative or innovative contribution to the state of the art.

Industrial application: The invention must have an industrial application, i.e. it must be capable of being used in a commercial or industrial context.

Clarity and conciseness: The patent application must be clear and concise, so that the claims of the invention are easily understood by a person skilled in the relevant technical field.

Non-obviousness: The invention must not be obvious to a person skilled in the relevant technical field.

It should be noted that software-related inventions may be more difficult to patent due to specific patentability requirements. In some countries, pure software inventions may not be patentable at all, while in others, sufficient interaction with the physical world may be required for an invention to be considered patentable.


Can information presentation software be patented?

Software is traditionally protected by copyright, as chosen by the legislator (law of 3 July 1985) and the European treaties.

Information presentation software does not a priori have such a technical character. It is excluded from patentability by Article L611-10, 2), c) and d) of the Intellectual Property Code.

 It is "pure" software, a bit like a word processor, a man-machine interface, with no particular technical effect, capable of solving a technical problem, of exerting a force.

On 11 Jan. 2023, the Court of Cassation issued several rulings on the subject, which may seem contradictory.

In No. 20-10.935 (rejection), the Court of Cassation is in favour of patentability and accepts the technical nature of information presentation software.

In No. 19-19.567 (cassation), the Court did not agree, and asked that the technical nature of the invention be demonstrated, again in relation to information presentation software.


See as well :

How to protect software?

Stone of Roquefeuil, patent attorney at Paris accompanies you to defend your interests and those of your company.


See as well :

Counterfeiting: how to react?

Counterfeiting: how to react: the intellectual property lawyer in Paris answers

Copyright, Trademarks, Patents, Designs and Models how to sue or defend yourself in case of suspected infringement? The intellectual property lawyer in Paris will inform and advise you.


Patents, copyrights, trademarks, designs and models are intellectual property rights; the list is not exhaustive.

They are registered with intellectual property offices, and it is their registration with these offices that establishes their existence, except in the case of copyright, which can be proven by any means.

Registration with the offices is not a guarantee of the validity of the title. Your title may therefore be declared invalid by a court if it does not meet the required conditions of validity.

Should civil or criminal proceedings be used to stop and punish counterfeiting?

The criminal route implies that the public prosecutor, in charge of defending public order and society in general, takes charge of the case: the prosecutor therefore no longer has control over his or her case in order to settle a dispute.

In addition, in the context of criminal proceedings, the prosecutor must prove the intention to infringe, which can be difficult to prove.

The civil route avoids these disadvantages.

On the other hand, when there is mass counterfeiting or when the counterfeiters are not immediately identifiable, the criminal route may be preferred, which makes it possible to implement means of investigation and action such as customs and judicial police.


Counterfeit : 

What can be asked?

If your work, productions or signs are copied, you can sue the copier for counterfeiting or unfair competition (parasitism).

It is of course advisable to call on a lawyer specialising in intellectual property law to analyse the situation and determine the conditions under which you can proceed. 

Not all copying is actionable, and the scope of what you can claim (bans, compensation) is variable.

You can also request preventive prohibition measures, seizures, measures to produce information on the extent of the infringement.

Some fifteen directives and two regulations of the European Union apply to copyright. These texts implement the international treaties that exist on the subject (WIPO, APDIC, Rome, Berne).

In France, Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the digital single market and amending Directives 96/9/EC and 2001/29/EC, ("DANUM" Directive), has been transposed 


  • by Order No 2021-580 of 12 May 2021 as regards Articles 13 and 17: "providers of online content sharing services" may be liable for infringing content uploaded by their users;


  • by Law 2019-775 as regards Article 15, by creating a neighbouring right for the benefit of press agencies and publishers


The principles are the same for trademarks, patents and designs.


Counterfeiting: What are the defences?

A person suspected of infringement may defend himself by stating 

  • that he is the legitimate holder or user of the right (ownership dispute);
  • that the right being challenged is invalid, outdated or not applicable (e.g. outside the territory);
  • that it benefits from the application of an exception; 
  • (reduces the attack) that the infringement does not cause harm; 


Roquefeuil avocats, a law firm specialising in intellectual property law, can assist you in these matters.

See as well : Assignment of copyright

Remuneration for work and payment of royalties, the issues – the lawyer in intellectual property law answers

Patent: is software patentable?


Apart from intellectual property infringement, what can be sued, how to defend the intangible assets of the company? : 


Intellectual property can only sanction certain acts, and cannot prevent free competition.

A company may seek to protect its assets in areas other than intellectual property: 

  • action for unfair competition and parasitism ;
  • violation of trade secrets, business secrets ; 
  • breach of contract ...


Lawyer specializing in intellectual property in Paris, patent law: employee invention patent: applicable texts

Update: Nov. 2, 2022

 A lawyer specializing in patent and industrial property law informs you that the applicable texts relating to the employee's invention patent.

Does the invention belong to the employee?

Useful for the employee as well as for the company, theobtaining a patent for a creation protects its holder and offers him the monopoly of exploitation of his invention, which brings him many advantages.

According to the INPI "90% des patented inventions are made by salaried inventors. Nevertheless, theinvention of employee is an area still little known which therefore generates many conflicts between companies and employees. These conflicts are partly due to negligence in the drafting of employment contracts.

The payment of additional remuneration to employees who are the authors of an invention sometimes presents difficulties in implementation. Thus, it is the responsibility of each of the parties not to know the legislation on this subject. Industrial property law provides that when an employee develops his invention, he must inform his employer, even if the project was carried out outside his working hours.

According to the provisions of the employee's employment contract, the invention belongs to the company, which has four months to claim the invention or to decide that it belongs to the employee. Consequently, it is imperative for the company, as for the employee, to know in which case the invention was made.

The cintellectual property ode oversees the regime for employee inventions. In its article L. 611-7, it specifies that “the inventions made by the employee in the performance of his employment contract belong to the employer. If the latter files a patent on this invention, he must inform his employee. The employee is then entitled to additional remuneration according to the conditions determined by his collective agreement. »

Contact a lawyer specializing in intellectual property law in Paris

For this regime to apply, two conditions must be met:

  • The inventor must have the status of employee to benefit from a additional compensation and mandatory paid by the company.
  • The invention must be patentable

You are an employee and your employer refuses your patent ? You are an employer and your employee has not kept you informed of his invention under his employment contract?

How to react in this case? What are your remedies? Stone of Roquefeuil, lawyer specializing in intellectual property law at Paris accompanies you to defend your interests and those of your company.


What is an invention patent? A lawyer specialized in industrial property assists you 

A employee invention patent is a protection for an invention carried out by an employee in the course of his duties. The employee who creates an invention has the obligation to inform his employer by means of a form which mentions:

  • The purpose of the invention, its characteristics and its description
  • The classification proposal: mission invention or off-mission invention
  • The context that allowed the invention
  • Fields of application of the invention
  • Technical and economic advantages of the invention
  • Inventors / authors and partners involved (identity and contact details, name of the laboratory, identity and contact details of the employer)
  • The distribution of contributions between inventors and authors

For his part, the employer must acknowledge receipt of the declaration. If he intends to exercise his right of allocation, he must do so within four months.

The document must then be delivered to the National Institute of Industrial Property (INPI). The sending must be done with a special envelope intended for the declarations of inventions of employees. A lawyer specialized in intellectual property law accompanies you in this process.

The employee, like the employer, is bound by an obligation of loyalty and confidentiality requiring them not to disclose the invention to a third party. This in particular as long as the classification, the attribution of the invention and the remuneration of the employee are not decided.


Employee invention: there are 3 types of inventions

The categories of inventions are specified in article L. 611-17 of the Intellectual Property Code. A lawyer specializing in intellectual property law can tell you about the type of invention that concerns you.


           The Invention of Mission

 Article L. 611-17 of the Intellectual Property Code specifies that "Inventions made by the employee in the performance either of an employment contract comprising an inventive mission which corresponds to his actual duties, or of studies and of research which are explicitly entrusted to it, belong to the employer (…).

The employee who is the author of an invention informs his employer, who acknowledges receipt of it in accordance with the procedures and deadlines set by regulation.

The methods of application of this article will be fixed by decree in Council of State”.

This concerns the invention that the employee has made under his employment contract.

The law of November 26, 1990 made compulsory the principle of additional remuneration for the benefit of the employee who is the author of a mission invention: "The conditions under which the employee, author of such an invention (mission invention) benefits from additional remuneration are determined by collective agreements, company agreements and individual employment contracts (art. L. 611-7-1 of the CPI)”.

In this context, the legislation provides for the employer's right to benefit from a patent following an employee's invention, however, he must pay a additional financial compensation for the employee. The average of this premium is 2200€ in France.


            Non-mission invention attributable to the employer

Paragraph 2 of Article L. 611-7 of the Intellectual Property Code specifies that:

“All other inventions belong to the employee. However, when an invention is made by an employee either in the course of the performance of his duties, or in the field of the company's activities, or by the knowledge or use of techniques or means specific to the company or data provided by it, the employer has the right, under the conditions and time limits set by decree of the Conseil d'Etat, to have the ownership or enjoyment of all or part of the rights attached to the patent protecting the invention of his employee (…)”.

The invention was conceived in the context of the work of the employee but was not requested by the employer. This invention may give rise to a patent. This on condition that the company negotiates with the employee and that it pays him remuneration in exchange for the transfer of these rights.


            The invention outside the mission and not attributable to the employer

In this context, it is an invention designed by an employee, unrelated to the company. The company cannot then apply for a patent since the invention belongs only to the employee.


Rights of exploitation of an invention: patent lawyer checks the applicable texts

In order to prevent possible disputes, it is essential that the employer inserts a “inventive mission” clause in the employment contract of its research and development employees. Also, he must inform his employees of the legal status of the employee's invention. Finally, he must ensure that internal specifications are drawn up. This is so that each employee knows the amount and the conditions of allocation of the additional remuneration.

The drafting of employment contracts must be carried out by a specialist. The same applies to the calculation of additional remuneration. A lawyer specializing in intellectual property law can help you in this process.


The employer refuses the patent: what are the employee's recourses with the help of the patent lawyer?

Sometimes, the collective agreement of a company imposes that the inventions which give rise to a taking out of patent by the company are the subject of a premium. In this case, this same agreement does not impose the payment of a premium in the context of a non-patentable invention.

As a result, when the employee's invention may sometimes not be patentable or constitute an innovation used by the company. In this case, the payment of a bonus is left to the discretion of the employer.


The exception of the trainee and the freelancer for the patent of invention

A trainee not being an employee of a company, the invention that he could be brought to make, therefore belongs to him. Nevertheless, employers should be careful to draw up contracts relating to the ownership of inventions made during an internship.

The freelancer, just like the intern, is not an employee and therefore not subject to the regime for employee inventions. The company must therefore plan a contract guaranteeing the attribution of the exploitation rights of an invention.


The declaration of invention: what is the role of the CNIS?

The National Commission for Employee Inventions (CNIS) can be referred to by the employer or by the employee. It is chaired by a magistrate assisted by two representatives. One representative for the employers and one for the employees.

The CNIS procedure results in two scenarios:

  • The first being that the CNIS manages to reconcile the employer and the employee. In this case, it draws up a report of their agreement.
  • The second being that the CNIS fails to reconcile the two parties. In this case, it draws up a conciliation proposal which constitutes an agreement between the two parties. One of the two parties nevertheless has the possibility of seizing the Paris court in order to submit the dispute.

Would you like advice on the invention disclosure procedure? Come with a lawyer specializing in intellectual property law.  Are you an employer or employee and are you having difficulty with an invention? Stone of Roquefeuil, lawyer specializing in intellectual property law at Paris, accompanies you in the defense of your interests.

See as well :

Competition, intellectual property and technological agreements

Goldd. no. 2021-1658, 15 Dec. 2021, relating to the devolution of intellectual property rights on assets obtained by authors of software or non-salaried inventors or public officials hosted by a legal person carrying out research: JO 16 dec. 2021

Consult the patent attorney

Counterfeiting: how to react?

The PACTE 2020 reform and patent, trademark, design & model texts

Contributions of the Pacte law (among others):

Patent and utility certificate:

The utility certificate makes it possible to protect an invention for ten years. The filing does not require the preparation of a research report, only the cost of writing that the inventor will be willing to bear.

The patent is valid for 20 years but requires a search report.

This research report aims to test the novelty of the invention, a condition for filing and validity of the patent. Since the reform, inventiveness is subject to examination by the office, and the patent can be challenged before the office.

As regards the utility certificate, valid for 10 years, the search report will only be required in the context of an action for infringement, attack or defence. If this report is negative the certificate may fall.

The provisional patent application allows a simplified filing, to be completed later.

employee inventions

Ask for a utility certificate


The trademark, when filed, remains not subject to verification, but may be the subject of opposition by an opponent, as is the case in patent matters, which may lead to the withdrawal or modification of the trademark application.

European texts:

DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of December 16, 2015 approximating the laws of the Member States on trademarks

from June 14, 2017
on the European Union trade mark
Regulation (EU) 608/2013 of the European Parliament and of the Council of 12 June 2003 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003

Other European texts (excluding reform) concerning IP: 

European Patent Convention:

DIRECTIVE 2004/48/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 29 April 2004 on the enforcement of intellectual property rights (Text with EEA relevance)

Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998 on the legal protection of designs or models

Council Regulation (EC) No. 6/2002 of December 12, 2001 on Community designs

French texts resulting from the PACTE Law reform codified in the Intellectual Property Code: Law n° 2019-486 of May 22, 2019 relating to the growth and transformation of companies
Ordinance No. 2019-1169 of November 13, 2019 relating to product or service marks

Ordinance No. 2020-116 of February 12, 2020 creating a right of opposition to patents of invention

Decree No. 2019-1316 of December 9, 2019 relating to product or service marks
Decree No. 2020-15 of January 8, 2020 relating to the creation of a provisional patent application and the transformation of a utility certificate application into an invention patent application
Decree No. 2020-225 of March 6, 2020 relating to the procedure for opposing invention patents

Order of December 9, 2019 relating to the procedural fees of the National Institute of Industrial PropertyTexts on intellectual property, overview:

Hierarchy of standards:

On respect for the Constitution:
On compliance with international texts: Article 55 of the Constitution:
“Treaties or agreements regularly ratified or approved have, from their publication, an authority superior to that of laws, subject, for each agreement or treaty, to its application by the other party. »
On compliance with Community texts (Union law): Preliminary question, Union law:
Union Charter, Article 47
TFEU articles 4, 258, 267


Ask for a utility certificate to protect your inventions!

invention patents

patent law

Update Sep 28, 2022:

The utility certificate has the same effects as the patent except for its maximum duration of 6 years instead of 20 for the patent (subject to payment of annuities each year), it cannot be transformed into a patent.

Its delivery is easier than that of the patent because its conditions of obtaining are lighter. At this stage, a search report on prior art likely to invalidate the title is not required.

The PACTE bill should encourage it by proposing a duration of 10 years and its possibility of transformation into a patent:


Problem :

Only 21% of invention patents are filed by SMEs, while 57% of invention patents are filed by large groups.

French SMEs file 4 times fewer patents than German SMEs.

Solution :

Create a provisional patent application and an opposition procedure before the National Institute of Industrial Property (INPI)

Creation – by decree – of a provisional patent application limited to 12 months: this is a “first step” of access to the patent that is both simplified and at a reduced cost for SMEs. The patent application may be supplemented subsequently, while preserving the benefit of prior art.

Creation of a new opposition procedure before the INPI: a simpler alternative to the only legal recourse existing today and allowing to attack at a lower cost patents of low quality, in particular devoid of inventiveness.

Extension of the utility certificate from 6 to 10 years: it can be transformed into a patent application if the company's invention requires stronger protection. The company will thus be able to choose the title which best corresponds to its strategy, in terms of scope of protection, duration of obtaining and cost.

On the PACTE reform

Employee patents and inventions

Articulation of competition law and intellectual property law, technological agreements

Community texts on competition law:


  • Articles 101 to 109 TFEU (former 81 to 89 of the TCE), relating to competition law.


  • Council Regulation (EEC) No. 4064/89 of December 21, 1989 on the control of concentrations between undertakings;
  • Council Regulation (EC) No. 1310/97 of June 30, 1997 (amending Regulation (EEC) No 4064/89 on the control of concentrations between undertakings);


  • COMMISSION REGULATION (EU) No 330/2010 of 20 April 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practices;


  • Council Regulation (EC) No. 1/2003 of December 16, 2002 on the implementation of the competition rules provided for in Articles 81 and 82 of the Treaty 101 and 102 currently);


  • Council Regulation (EC) No. 139/2004 of January 20, 2004 on the control of concentrations between undertakings;


Community texts relating to research and development:


  • Commission Regulation (EU) No 1217/2010 of 14 December 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to certain categories of research and development agreements development. “This regulation provides an exemption for certain categories of research and development agreements and, in doing so, aims to ensure effective protection of competition and to guarantee sufficient legal certainty for the parties to research and development agreements”.


  • COMMISSION REGULATION (EU) No 1218/2010 of 14 December 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to certain categories of specialization agreements


  1. The case of technology transfer agreements


A technology transfer agreement is an agreement by which one party authorizes another to use its technology (patent, know-how, software) for the production of new products.
This type of agreement is considered to be “pro-competitive”, since it stems from the sharing of intellectual property, which is considered a factor of economic growth.
Technology transfer agreements are governed by a regulation:
  • REGULATION (EU) Noh COMMISSION 316/2014 of 21 March 2014 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements (replaces Regulation (EU) No 772/2004 of April 27, 2004):


  • bilateral licensing agreements concluded between firms with limited market power are, under certain conditions, deemed not to have anti-competitive effects. This text has been widely criticized because it uses market shares as criteria. Thus, agreements between firms are considered lawful or not depending on whether or not they lead to the control of 20 % of the sector concerned (if the agreement is made between competing entities); and 30 % (if it concerns non-competitors). However, in the fields of technology and innovation, this criterion seems inefficient, due to the complexity of the products targeted and because we are rather in market shares which remain potential.
  • In order to avoid a violation of free competition rules, not all technology transfer agreements benefit from an exemption.
  • Research and development agreements will now only fall under this regulation if the block exemption regulations for R&D agreements (1217/10) and on specialization agreements (regulation 1218/2010) are not applicable.
  • Previously, the aforementioned regulation of 2004 provided for a possibility of exemption concerning the passive sales restrictions inserted in a technology transfer agreement between non-competitors (art. 4, §2, b, ii). From now on, this regulation aligning itself with regulation 330-2010 on vertical restraints, excludes the exemption in all cases of passive sales restrictions.
  1. Licenses
In this respect, the principle of compulsory licenses imposed by the competition authorities is central because it involves calling into question a property right.


The Court of Justice had moreover perfectly understood this in the Magill case (ECJ, 6 Apr. 1995, Radio Telefis Eireann (RTE) and Independent Television Publications Ltd (ITP) v. Commission of the European Communities, C-241/91 P and C-241/91 P).
It had underlined the exceptional circumstances of this case by imposing very strict conditions on the granting of compulsory licenses. In particular, the refusal of a license had to prevent the appearance of a new product corresponding to consumer demand.
In another judgment, the Volvo judgment (CJEC, 5.10.1988, Volvo/Veng, case 238/87), the Court recognizes that the refusal to grant a license thus allowing the licensees to compete directly with the holder of the property right intellectual property (by authorizing them to sell the same spare parts as those which it sells, in this case) cannot as such constitute an abuse of the dominant position which it may hold on the market for these spare parts.


It follows from the comparison between the Volvo and Magill judgments that when the application for a license does not allow the appearance of a new product, but simply to compete with the holder of the intellectual property right (by offering an identical good), the CJEU accepts that the holder of the intellectual property right refuses to license.
On the other hand, when the refusal to license aims to unjustifiably prevent the creation of a new product, which would compete with the products of the holder of the intellectual property, IThe refusal to dismiss constitutes an abuse of a dominant position.
But over time, these conditions have eased and there is now total uncertainty.
Since the Microsoft case (TPI, 17 September 2007, Microsoft Corp. v. Commission, T-201/04), it suffices that the license allows a “better” product for compulsory licenses to be possible.
It is to transform the competition authorities into evaluators of innovation and this is not their role.
  1. abuse of dominant position
Commits an abuse of a dominant position (sanctioned by all the national laws of the Member States and, in Community law, by Article 102 of the TFEU Treaty), a company in a dominant position on a market (monopoly or quasi-monopoly) which , possessing a skill that cannot be recreated, refuses access to it to a third party without a legitimate reason.
We can cite the example of a dominant company on a market thanks to the patents it holds, and which engages in predatory methods (predatory pricing for example) against a competitor.
The central point is to examine whether or not the company is dominant in a market, whether through a patent or through the effectiveness of its commercial communication.


The outline of a patent on an innovation is vague and subject to controversy. It is then that, in a context favorable to patent holders (as in the United States), companies can pass as infringers which in all good faith did not at all feel that they were infringing.
Let us add that the number of patents taken out by an inventor is counted by tens or even hundreds. Involuntary counterfeiting is then greatly multiplied.
In a AstraZeneca v. Commission judgment of 1er July 2010 (C-457/10 P), with regard to the concept of abuse of a dominant position, the General Court confirmed its case-law according to which, to constitute such an abuse, a behavior must not necessarily affect competition directly. He also insisted on the objective nature of this concept, which does not require the establishment of an intention to harm. In the present case, it therefore mattered little whether or not the impugned practices resulted from deliberate behavior on the part ofAstra Zeneca.
  1. Europe and intellectual property rights


The Court of Justice of the European Communities had previously had occasion to recall several principles:


  • In the absence of Community harmonization of intellectual property rights, it is up to each Member State to establish its own national legislation (Parke Davis judgment (29 February 1968, C-24/67)).


  • An intellectual property right does not necessarily confer a dominant position on a market. To apply competition law to the holder of an intellectual property right, it is necessary to carry out a case-by-case analysis of the market or markets and of the position of the holder of the intellectual property right in this or these markets (Deutsche Grammophon judgment (8 June 1971, C78/70)).

Breach of software license is not infringement

Patent law and employee inventions