Cross-Border Inventorship Issues Jeffrey Ranck Associate General Counsel Microsoft Corp.

Microsoft Corporate Overview Microsoft Worldwide Research & Development (R&D) USA Japan UK Denmark Israel India China Ireland 11/18/2018

Microsoft’s Preference 1st Filing United States Decision Year International Filing Selection PCT Selected Countries 11/18/2018

CN Law “an Inventor is one who makes a creative contribution to the substantive features of an invention” What is a creative contribution? What is a substantive feature? 11/18/2018

35 USC 184 – US FF License 35 U.S.C. 184 Filing of application in foreign country. Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. . . . 11/18/2018

US Export Regulations / FF License US FF License 11/18/2018

Conservative Approach Coarse Filter Refinement by patent group Assess Export Control Reside in CN Contributed to Claims CN Inventor? CN FF clearance for US 1st Filing; or US FF license, PCT/CN RO 1st Filing 1st Filing + Remuneration 11/18/2018

Remuneration “Reasonable” is tough to interpret MS Approach Negotiated, Fixed Amounts Payment at filing and at issuance (e.g. pay for more things than the statue requires) If you have no clue how much: Get counsel, Do benchmarking with other companies 11/18/2018

Legal and Corporate Affairs 11/18/2018 © 2009 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries. The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION. 11/18/2018 © 2009 Microsoft Corporation. All rights reserved. Microsoft, Windows, Windows Vista and other product names are or may be registered trademarks and/or trademarks in the U.S. and/or other countries. The information herein is for informational purposes only and represents the current view of Microsoft Corporation as of the date of this presentation. Because Microsoft must respond to changing market conditions, it should not be interpreted to be a commitment on the part of Microsoft, and Microsoft cannot guarantee the accuracy of any information provided after the date of this presentation. MICROSOFT MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, AS TO THE INFORMATION IN THIS PRESENTATION.