New rules for employee inventions in the metallurgy sector

An amended version of the Convention collective nationale de la métallurgie (hereafter the “CCNM”) came into effect on 1 January 2024.

The CCNM applies to companies in continental France whose activity is mentioned in the National Agreement of 16 January 1979 pertaining to the scope of application of national metallurgy agreements. These arecompanies whose main activity relates to one of the “APE” codes listed in said National Agreement  (hereafter the“In-scope Companies”). The CCNM applies to the In-scope Companies regardless of whether they are affiliated with any of the organisations that signed the CCNM, as the CCNM has been extended by arrêté of 14 December 2022.

Among other changes, the CCNM introduces new provisions regarding patentable employees’ inventions. These new provisions apply to any employee of the In-scope Companies who is the author of an invention made during the performance of (i) an employment contract which includes an inventive mission corresponding to their actual duties or (ii) studies and research explicitly assigned to them.

In light of its temporal scope, the CCNM should apply to patentable inventions of mission created on or after 1 January 2024.

As explained below, actions may be necessary to comply with the CCNM.

Main changes brought about by the CCNM regarding employees’ inventions

In addition to incorporating provisions of the French Intellectual Property Code (hereafter the « French IPC ») pertaining to employees’ inventions, the CCNM introduces new rules:

• It sets a minimum amount (300 euros) of additional remuneration which the employer must pay to any employee who makes an ‘invention of mission’.

The CCNM (article 149) provides that the right to this additional remuneration arises “on the date of the invention”. It follows from this provision that the 3-year limitation period for claims for payment of wages, provided for in article L3245-1 of the French Labour Code and applicable in this matter, starts to run from this date.

For the sake of simplicity and as a precaution, the In-Scope Company could consider the date of the employee’s declaration of the invention as the starting date of the 3-year limitation period, given that it is generally difficult to determine the exact “date of the invention”.

The 3-year limitation period is shorter than the 5-year limitation period set by ordinary law (droit commun). However, it exceeds the 2-year limitation period provided for in article L1471-1 of the French Labour Code (created by a law of 14 June 2013), which should apply to the payment of the fair price of an attributable out-of-mission invention (thereby replacing the 5-year limitation period provided for by ordinary law). This application is contingent upon the interpretation provided by the courts.

• It also requires the employer to consider “the terms and conditions of any extra remuneration to be paid to the employee who is the author of an invention of mission, in particular when the invention is of exceptional interest to the company”.

What In-scope Companies should do now

The CCNM’s new ‘additional remuneration’ rules put an end to an outdated and partly illegal version of the CCNM.

Indeed, it is worth recalling that, following a decision by the French Cour de Cassation of 22 February 2005, the provisions of the National Collective Agreement for Engineers and Managers in the Metallurgy Industry of 13 March 1972 – which provided for an additional remuneration only for inventions “of exceptional interest to the company, the importance of which would be disproportionate to the inventor’s salary” – no longer produced effect. The French Cour de Cassation ruled that these provisions were null and void, considering them too restrictive considering article L611-7 of the French IPC which requires the employer to pay an additional remuneration to the employee inventor.

From now on, the « exceptional interest » of an invention is only one factor among others when considering a possible ’extra’ remuneration, in addition to the minimum additional remuneration of €300.

The new provisions of the CCNM could be interpreted by the courts as obliging the employer to pay an additional remuneration following a review of the invention’s value by a patent committee, according to criteria to be defined, including the criterion of the invention’s “exceptional interest” for the company. It is therefore advisable to set out the conditions and criteria of this review in the company’ IP policy.

According to case law, inventions of “exceptional interest” may be groundbreaking inventions, inventions that generate or lead to the expectation of high revenues for the company (sales, margins), or those that have benefited from significant development investments. These are only examples, as the exceptional interest depends on the context of the invention and the company’s field of activity.

Please note: the CCNM does not apply to interns. Inventions made by interns of the In-Scope Companies are subject to a specific legal framework. This framework was created by the ordonnance of 15 December 2021 and its implementing decrees of 11 August 2023. The legal framework for interns’ inventions, inspired by that applicable to employees, applies to all interns who are authors of software or inventions (see our detailed newsletter for more information on this legal framework).

For simplicity and, again, as a precaution, we advise companies to align their IP policies for interns’ inventions with those for employees’ inventions. In doing so, we recommend considering the differences in wording between the legal frameworks applicable to interns’ and employees’ inventions in order to mitigate potential legal risks (in particular, the notions of “financial consideration” and “host company”, which are specific to the legal regime applicable to interns’ inventions, should be carefully considered).

In conclusion, In-Scope Companies should review their employment contracts, as well as their internal policies and company-level collective agreements relating to employees’ and interns’ inventions, to ensure that they comply with the new provisions of the CCNM and mitigate the risk of future claims.

Please do not hesitate to contact us if you need any assistance in this matter.

MICHEL ABELLO
Managing Partner
michel.abello@abello-ip.com

MATHILDE JUNAGADE
Senior Lawyer
mathilde.junagade@abello-ip.com

MAXIME D’ANGELO PETRUCCI
Lawyer – Head of Transactions Department
maxime.dangelopetrucci@abello-ip.com