The PACTE law on the growth and transformation of companies facilitates the valorisation of public research.
We offer you a series of interviews divided into three episodes that will present the main new developments in terms of legislation and innovation. In this first episode, Audrey GARCIA-COUSTEAU, Lawyer at the SATT Sud-Est lends herself to the question-and-answer game.
On the menu of episode 1: valorisation and public co-ownership of research results, what progress has been made?
The PACTE Act on the Growth and Transformation of Enterprises includes measures that are relevant to innovation and contains provisions to simplify and facilitate the valorisation of public research.
Audrey, can you explain the role of the sole agent in the commercialization of research results?
In order to better understand the role of the single representative, we should first recall that the organization of French research is based on multi-tutorship research units. While this organization promotes interdisciplinarity, it can lead to complex situations of co-ownership involving the sharing of intellectual property on results from public research between several institutions. However, measures to protect a valuable result must be taken quickly.
Thus, the law has enshrined the obligation for public institutions to designate, for each research unit, a single agent who is entrusted with the management, exploitation and negotiation of patentable inventions where there is "public co-ownership" of industrial property titles. The single representative is mandated to carry out these missions: he is the sole interlocutor in charge of the valorisation of the results with the interested companies.
With the aim of encouraging and accelerating this transfer of results to companies, a new decree supplements the provisions of Article L. 533-1 of the Research Code stemming from the PACTE Act, in particular to strengthen, clarify and broaden the mandate mechanism.
What are the main contributions of the decree?
This regulatory text specifies the methods for the management and use of the results of public research by the sole agent. The decree first sets out new procedures designed to facilitate the appointment of the sole representative and reduces the time limit for making this appointment to one month from the administrative creation or renewal of the research unit.
The scope of the powers that may be attributed to the sole agent is broadened. The decree thus lists the acts necessary for the legal protection of the results, such as, for example, the formalities that mark out the life of intellectual property titles and the acts relating to the defence of rights to the results in order to establish or contest an act of infringement. As regards the acts of exploitation that can be performed by the sole agent, they range from the negotiation to the signature of confidentiality agreements, co-ownership agreements and exploitation license agreements. He may now carry out acts of assignment or abandonment of patent applications, which was previously expressly excluded from his powers.
The text lays down rules for the management of co- ownership which are necessary in the absence of an agreement between the public persons co-owners of results in order not to block the exploitation of the results in question.
These provisions aim to introduce greater simplicity in the management and exploitation of public research results by the single agent to facilitate their transfer to the socio-economic world.
Our expert, Audrey GARCIA-COUSTEAUBusiness Lawyer & Legal Counsel, Lawyer in Business Law Licensing at SATT Sud-Est, a graduate of a Master in Business Law, specializing in Industrial Property Law and a Master in Business Law and Management, answers questions concerning the single representative.
Does this decree introduce major changes to the activity of the sole agent?
The decree proposes a framework allowing co-owners to entrust important prerogatives to the sole agent via the mandate. The direct consequences on its activity come from the introduction of new deadlines that it must respect in the context of its obligations towards the co-owners and in particular :
- The period of 2 months from receipt of a declaration of invention to inform of decisions on protection and use,
- The 4-month period before any decision to abandon a title deed .
For example, upon receipt by SATT South East of an invention declaration, the project team analyzes the potential of the results for presentation to the Intellectual Property Committee (IPC), the decision-making body of SATT South East. The latter gives its opinion on the strategy to be adopted with regard to the project within the two months imposed by the decree. At the end of the CPI, the SATT Sud-Est then communicates the decision to the co-owners, in accordance with the provisions of the decree.
Coming up next, episode 2 - PACTE and Innovation Act: a look back at the provisions relating to researchers-entrepreneurs
To go further
- Discover the Law n° 2019-486 of 22 May 2019(JO 23 May) relating to the growth and transformation of companies, known as the "PACTE law".
- Consult article L. 533-1 of the Research Code
- Take note of Decree n°2020-24 of January 13, 2020 relating to the management of co-ownership of research results, the method of appointment and the missions of the sole agent.
- Photo copyright ©Fauxels
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