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

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

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

4. 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

5. 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

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

7. 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

8. 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

9. 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.