Volkmar Henke, Slide 1 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

Volkmar Henke, Slide 2 Introduction The European Perspective ??

Volkmar Henke, Slide 3 Introduction The European Perspective … There is no European Perspective!!

Volkmar Henke, Slide 4 Introduction The European Perspective … … but many different Perspectives!

Volkmar Henke, Slide 5 I. Ownership Chain: Applicable law II. Employee´s Rights III. Security Provisions IV. Inventorship and Co-Inventorship

Volkmar Henke, Slide 6 I. Introduction: Ownership Which law is applicable for the ownership chain? FR, DE: law of the employment contract UK:residency of the employee

Volkmar Henke, Slide 7 I. Introduction: Ownership Art 60 EPC: (1) 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;

Volkmar Henke, Slide 8 I. Introduction: Ownership Art 60 EPC: (1) 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.

Volkmar Henke, Slide 9 I. Introduction: Ownership =>National and European patents may be based on different ownership chains: (1) Ex: French company hires employee to work in German lab under French contract. FR-patent follows French law EP-patent follows German law (2) Ex: German company has French subsidiary. Employment according German law FR-patent follows German law EP-patent follows French law

Volkmar Henke, Slide 10 I. Ownership Chain: Applicable law II. Employee´s Rights III. Security Provisions IV. Inventorship and Co-Inventorship

Volkmar Henke, Slide 11 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.

Volkmar Henke, Slide 12 II. Employee`s Remuneration provisions Second Common principle Inventors of such Inventions… (service inventions, mission inventions, research inventions) … may receive an additional remuneration.

Volkmar Henke, Slide 13 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)

Volkmar Henke, Slide 14 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

Volkmar Henke, Slide 15 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

Volkmar Henke, Slide 16 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

Volkmar Henke, Slide 17 I. Ownership Chain: Applicable law II. Employee´s Rights III. Security Provisions IV. Inventorship and Co-Inventorship

Volkmar Henke, Slide 18 III. Security provisions Three groups No:DK, IT, AT, CH, CZ Defense related: UK, DE, NL Independent of technology: FR

Volkmar Henke, Slide 19 III. Security provisions Different scopes No disclosure:DE First national filing:NL, UK, FR Foreign filing license possible:FR, UK, DE

Volkmar Henke, Slide 20 III. Security provisions Different criteria for application nationality / domicile / establishment of applicant:NL, FR residency:UK, FR content of the invention:DE

Volkmar Henke, Slide 21 I. Ownership Chain: Applicable law II. Employee´s Rights III. Security Provisions IV. Inventorship and Co-Inventorship

Volkmar Henke, Slide 22 IV. Co-Inventorship (Introduction) Application / Prosecution 1 Patentee using licensing selling Infringement claim Exploitation

Volkmar Henke, Slide 23 IV. AIPPI-resolutions to Co-Ownership Application / Prosecution? Co-owners Exploitation? ?? AIPPI - Q 194: 2007 Singapore 2009 Buenos Aires

Volkmar Henke, Slide 24 IV. Co-Inventorship: Further questions Co-owners 2. Applicable laws in the ownership chains 3. Restrictions according to national laws 1. Who is inventor?

Volkmar Henke, Slide 25 Statistics of the EPO: 2 or more Inventors / Applicants / Patentees Year % of Applications Plurality of Inventors Plurality of Patentees Plurality of Applicants Q194 Singapore / Buenos Aires

Volkmar Henke, Slide 26 IV. Co-Inventorship First step of the ownership chain: Who has the (original) right to the invention / the patent? Rights are conferred if… 1.technical 2.applicable 3.new 4.inventive Co-owners … is achieved by several contributions

Volkmar Henke, Slide 27 IV. Co-Inventorship Rights are conferred if… 1.technical 2.applicable 3.new 4.inventive Co-owners Main problems: Objective criteria (regarding the „invention“) are not longer applicable Subjective critera must be developed

Volkmar Henke, Slide 28 IV. Co-inventorship Criteria NOT as much as „sole inventorship“ => not „inventive“ BUT: „Creative“ contribution? („schöpferisch“) „Constructive“ contribution „Significant“ contribution

Volkmar Henke, Slide 29 IV. Co-inventorship Negative Criteria Work according to the specifications of a third person Contributions whith no influence on the result Financial contributions

Volkmar Henke, Slide 30 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)

Volkmar Henke, Slide 31 IV. Co-inventorship (conclusion) These inventions deserve AIPPI´s attention