AIPPI Forum & ExCo 2011

AIPPI Forum & ExCo 2011 Workshop V Inventorship for multinational inventions involving IP issues resulting from outsourcing The European Perspective Dipl.-Phys. Dr. jur. Volkmar Henke

Introduction The European Perspective ??

Introduction The European Perspective … There is no European Perspective!!

Introduction The European Perspective … … but many different Perspectives!

Ownership Chain: Applicablelaw • Employee´sRights • Security Provisions • Inventorshipand Co-Inventorship

I. Introduction: Ownership Which law is applicable for the ownership chain? • FR, DE: law of the employment contract • UK: residency of the employee

I. Introduction: Ownership Art 60 EPC: • The right to a European patent shall belong to the inventor or his successor in title… If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employeee is mainly employed;

I. Introduction: Ownership Art 60 EPC: • The right to a European patent shall belong to the inventor or his successor in title… If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employeee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has his place of business to which the employee is attached.

I. Introduction: Ownership => National and European patents may be based on different ownership chains: • Ex: French company hires employee to work in German lab under French contract. • FR-patent follows French law • EP-patent follows German law • Ex: German company has French subsidiary. Employment according German law • FR-patent follows German law • EP-patent follows French law

II. Employee`s Remuneration provisions First Common principle Inventions which are made… • during the term of / in course of the employment • resulting from the employee´s tasks … may be accquired by the employer.

II. Employee`s Remuneration provisions Second Common principle Inventors of such Inventions… (service inventions, mission inventions, research inventions) … may receive an additional remuneration.

II. Employee`s Remuneration provisions Difference 1 Additional remuneration is awarded • regularly: DE, FR, DK, SE • in special circumstances: IT, ES, UK, NL (outstanding benefit)

II. Employee`s Remuneration provisions Difference 2 Aspects determining the reasonable remuneration: • invention: DE, SE • benefit of employer: FR, GB, (DE), (SE) • position of inventor: DE, FR, ES, NL, SE

II. Employee`s Rights Special Pitfalls in Germany The employer must … • … file national patent application • … give employee the right to file foreign applications in all countries in which he does not file himself

II. Employee`s Rights Special Pitfalls in Germany The employer must … • … file national patent application • … give employee the right to file foreign applications in all countries in which he does not file himself • Beware of undue disclosure of the invention! • Possible are: • narrow statutory exeptions • buyout of these rights • But only AFTER the invention is made

III. Security provisions Three groups • No: DK, IT, AT, CH, CZ • Defense related: UK, DE, NL • Independent of technology: FR

III. Security provisions Different scopes • No disclosure: DE • First national filing: NL, UK, FR • Foreign filing license possible: FR, UK, DE

III. Security provisions Different criteria for application • nationality / domicile / establishment of applicant: NL, FR • residency: UK, FR • content of the invention: DE

IV. Co-Inventorship (Introduction) Application / Prosecution 1 Patentee Exploitation using Infringement claim licensing selling

IV. AIPPI-resolutions to Co-Ownership Application / Prosecution? Co-owners Exploitation? ?? ?? ?? • AIPPI - Q 194: • 2007 Singapore • 2009 Buenos Aires ??

IV. Co-Inventorship: Further questions 1. Who is inventor? 2. Applicable laws in the ownership chains 3. Restrictions according to national laws Co-owners

Statisticsofthe EPO: 2 ormore Inventors / Applicants / Patentees Plurality of Inventors % ofApplications Plurality of Applicants Plurality of Patentees Q194 Singapore / Buenos Aires Year

IV. Co-Inventorship First step of the ownership chain: Who has the (original) right to the invention / the patent? • Rights are conferred if… • technical • applicable • new • inventive Co-owners … is achieved by several contributions

IV. Co-Inventorship • Main problems: • Objective criteria (regarding the „invention“) are not longer applicable • Subjective critera must be developed • Rights are conferred if… • technical • applicable • new • inventive Co-owners

IV. Co-inventorship Criteria • NOT as much as „sole inventorship“ => not „inventive“ • BUT: • „Creative“ contribution? („schöpferisch“) • „Constructive“ contribution • „Significant“ contribution

IV. Co-inventorship Negative Criteria • Work according to the specifications of a third person • Contributions whith no influence on the result • Financial contributions

IV. Co-inventorship Issues / further questions • Contributions which have been valuable for the result, but for itself have been unsuccessful • Contributions by assigning tasks • Contributions to dependent claims (now DE) • Contributions to preferred embodiments (now DE)

IV. Co-inventorship (conclusion) These inventions deserve AIPPI´s attention

AIPPI Forum & ExCo 2011