English Patent Law and International Private Law

To my dear english friends,

I am now working on International licences of patents problems.

I am trying to solve the following hypothetical.

A French company seeks to export her patent to the United Kingdom. This company decides to merely adapt a French contract which is a partial exclusive licence of patent and use it to exploit her patent in the UK.

A provision of this partial exclusive licence stipulates that French law shall govern the contract. Another provision states that the Paris Tribunal de Commerce (french court) is the only forum allowed to hear any litigation or claim arising out of the contract.

Is this stipulations valid under english patent law and under english international private law? In other words what are the limits to the freedom of will of the parties (from an Internatioanl Pirvate law perspective)? Does the english Patent Act 1977 contains provisions "d'ordre ublic" (mandatory provisions) which would overruled the will of the parties?

I am particularly concerned about the consequences of the qualification of the contract as an exclusive licence. Indeed I am aware that under english law, such contract empowers the licensee to bring an action before court where a patent infringement occurs.

The second main consequence, following the defintion given by the Patent Act 1977 ( section 130) is that the licencee is the only person (exclusive of the grantor and any other licensee) to exploit the patent in the United Kingdom.

What if the French contract stipulates that the licensor is the only person entitled to bring an action before court and is able to exploit the licence in the UK next to the licensee?

Any comments or answers or refernces to books/articles on this problem would be much appreciated.

Alan Ragueneau
raguenea[_at_]student.law.ucla.edu
Master inIntellectual Property (Nantes - France) LLM in Intellectual Property (UCLA - 1998/1999) Received on Tue Oct 27 1998 - 17:34:22 GMT