Workshop V Multinational Inventions- How to Reconcile IP Issues Moderated by Lawrence T. Welch Eli Lilly and Company

The Problem “Business is global, but laws are local.”* Research now spans the globe, and researchers are collaborating on projects often resulting in inventions with inventors from more than one country Laws in US, Europe, Japan, China, India, etc. vary on key points Security clearances/ requirement for filing first in the country where the invention is made Inventor remuneration Definition and application of rules of inventorship * Luncheon Address of James Pooley, WIPO at the Intellectual Property Owners Annual Meeting, Los Angeles, Sept 12, 2011 Lawrence T. Welch June

Variability on key elements* Security clearance provisions in some countries US China India Korea Certain European countries (e.g., UK, Spain, Germany) No security provisions in other countries, e.g., Japan Canada Australia Mexico Certain European countries (Austria, Czech Republic, Slovak Republic, Cyprus, Switzerland) Taiwan 3

Consequences of failure to comply vary by country as well… Loss of patent rights Criminal sanctions Excuses for inadvertent errors? 4

Foreign filing licenses instead of filing Available in US But, applying for a license in another country first could violate US law Available in China, but could take several months Applying for a license in another country first apparently does not violate the law Not available in some countries, e.g., Spain, Russia 5

Variability on inventor’s remuneration Inventor’s remuneration not required, in, e.g., US India Inventor’s remuneration can be required in, e.g, Japan China Europe (e.g., e.g. Austria, Bulgaria, Denmark, France, Germany, Greece, Hungary, Italy, the Netherlands, Norway, Portugal, Spain, Sweden and the United Kingdom)* Korea Nature and amount of compensation vary greatly by country 6

Issues include What happens if there is a joint invention involving US and Chinese inventors Filing first in US would violate Chinese law Filing first in China would violate US law Request for foreign filing license in China could violate US law Request for foreign filing in US followed by actual filing in China may satisfy both country’s laws How do you apportion inventor remuneration? How do you reconcile differing notions of inventorship? 7

Panelists Qing Ge (Liu Shen, China) Volkmar Henke (Eisenführ, Speiser & Partner, Germany) K. Vivek Reddy (VIVEK REDDY LAW CHAMBERS, India) Jeff Ranck (Microsoft, India) 8