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Session 1b Application of the law governing employee inventor rights to various scenarios

Discussion Questions/Variations. If there is no employment contract or it is silent on the ownership of inventions made by employee, who owns the patent rights? If the employee, may the employer use the patented invention without the employee's permission?If the employer owns the patent and makes

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Session 1b Application of the law governing employee inventor rights to various scenarios

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    1. Session 1(b) Application of the law governing employee inventor rights to various scenarios France - Thomas Bouvet, Avocat la Cour, Vron & Associs, Paris Germany - Dr. Jrgen Meier, Patentanwalt, Vossius & Partner, Munich Japan - Professor of Intellectual Property Law, Tokyo University of Science United Kingdom - Myles Jelf, Partner, Bristows, London US - John McDermott, Professor of Law, Loyola Law School

    2. Discussion Questions/Variations If there is no employment contract or it is silent on the ownership of inventions made by employee, who owns the patent rights? If the employee, may the employer use the patented invention without the employees permission? If the employer owns the patent and makes substantial unexpected profits, is the employee-inventor entitled by law to a share in such profits? If there is an employment contact, collective bargaining agreement or written company policy which provides that the employer owns rights to all inventions made by the employee, who owns the patent rights (i.e. is the agreement valid and enforceable)? If the employer owns the patent and the employer either develops and markets the invention or licenses another company to do so, under what circumstances, if any, does the employee have any right to additional compensation for his/her invention? How is the additional compensation calculated?

    3. Discussion Scenarios Discussion Scenarios Employer is a major aerospace company (manufactures military and commercial aircraft and components; doesnt make automobiles or components):

    4. Discussion Scenarios -1 Employee is hired as a janitor; receives minimum wage; invents - using company facilities, supplies & equipment during free time, lunch breaks and occasionally after work - a new broom which gets all the dirt out of corners. His direct supervisor is aware of his efforts and has encouraged him to keep working on it -provided he does the job he was hired to do. Employee is a trainee or an intern." She had done some preliminary work on a hydrogen-powered automobile engine as a student. While working in the Companys laboratory during her free time [because she had few demanding assignments, she had a substantial amount of free time] and afterhours, develops such an engine. Employee, a recent PhD, is hired to work on an improved hydrocarbon jet fuel. He's had an idea for a hydrogen-powered automobile engine before joining the company and,working in the laboratory during his free time and afterhours, develops such an engine. To assist in the development of the new jet fuel, the employer retains the services of a distinguished university professor who is the leading expert in advanced fuel technology. She develops the desired product.

    5. Discussion Scenarios (continued) Employee, a former Chief Scientist at a competitor, is hired as a Senior Researcher at a top salary to work on an improved hydrocarbon jet fuel. It takes several years, but he eventually develops a mixture that is both inexpensive to produce and also reduces pollution. The Senior Researcher described above, who, although never requested to do so, simultaneously develops a variation of the jet fuel which can be used in automobiles which reduces pollution and increases mileage. The Senior Researcher described above, while working on the jet fuel project accidentally discovers that certain of the components of the new jet fuel will remove freckles and age spots and, without advising his employer, files a patent application for a freckle/age spot removing cream. Recent technical university graduate is employed by the national government's Environmental Protection Agency to improve efficiency in hydrocarbon fuels. She develops a new formula for a non-polluting hydrocarbon fuel with surprisingly good fuel efficiency.

    6. Choice of Law/Proper Law Question Suppose the employee is a US citizen working for a foreign (French, German, British, Japanese) subsidiary of a US company in France, Germany, UK or Japan) OR a French, German, British, Japanese citizen working for a French, German, British, Japanese company in the US, what law applies to determine his employee-inventor right? Simply the law of the place of employment, regardless of nationality of employer/employee? Would local (employment) law accept that the individual employment contract, that would otherwise be subject to German / UK/US/Japanese law, specifies that the issues of employees inventions be treated according to foreign, say French, law? For the European representatives, is article 60EPC consistent with your national rules of conflict of law?

    7. Any Questions? Comments? Short pause while we arrange for next Session.

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