Can I sell my patent, deposited in Italy, to a French company? If yes, what type of contract should I choose?
Stating in advance that patents are not to be “sold” but they are transferred or leased, depending on whether you want to completely free yourself of the patent or just cashing in an income and remaining the owner, the answer to the question can be yes, but with some clarifications. From what it appears, at the moment there is only a patent application deposited in Italy, it is possible to transfer to the French company only the one owned by you, i.e. the Italian one. This means that the company would only buy the right to have the patent in Italy, with the consequence that it would only be able to sell and produce in our country.
The real problem is that it could produce and sell that product, without any problems, in France or other countries where the patent has not been requested, without having to pay anything and, given the fact that normally the company manufactures in the country where it is based, it becomes not impossible, but certainly of little convenience to transfer a patent not relating to the country of production of the same firm. At this point it is necessary to evaluate for how long the patent application has been deposited in Italy: if it is less than a year, then I is possible to extend it to other countries, better still at European level, and transfer to the French company the European application which includes France too.
As an alternative it is possible to transfer to the French company the Italian application with the relative “priority right”, even if this, although more economical, is more complex. Regarding the type of contract, it is a private writing with a variable intricacy according to the set conditions. If it is a simple transferral, upon a “once off” payment, the agreement is rather easy even if, in the case of Italian patent handover, a Notary must certify the signatures and the act must be transcribed at the Italian Patents and Trademarks Office.