1. INTELLECTUAL PROPERTY ISSUES IN MULTINATIONAL COLLABORATIVE RESEARCH RESULTING FROM OUTSOURCING K.Vivek Reddy

2.  USPTO 1976 -2004 – Over 1000 Indian Inventors. 80% are with US Inventors.  Significant Growth in Research Labs in IT and Pharmaceutical Industry  Collaborative Ventures are going beyond task-driven Outsourcing.

3.  Identification of Inventors  Ownership of Invention  Foreign Filing  Inventor Remuneration

4. INDIA “True and First Inventor” – “All persons who actually laboured and part of the process” US 1973 – Reading Industries – Parameters of Joint Inventorship – “one of the Muddiest concepts in the muddy metaphysics of patent law” Patent Act U.S.C 116– Obligation to apply for a patent jointly if invention made by two or more people Does not require a. Physical proximity b. Equal Contribution c. Exhaustiveness – Need not cover every claim of the patent.

5. Joint Invention – a. Joint manner of contributing AND b. Inventive Nature of Contribution Stage: Conception or Reduction to practice Slicing and Dicing of Inventive Process

6. 1. Material Contribution to the Ultimate Invention 2. Solving problem not recognized by the Initial Inventors 3. Solves a problem that initial inventors could not solve 1. Produced an advantage not contemplated by initial inventors

7. I. Communication among Inventors. Enhancing Innovation through Considerartion of Ideas Quantum of Collaboration Upaid Dispute II. Significant Contribution to Conception III.Intend that inventions be merged. Interplay between the Conception and the Collaboration

8. IV. Conflicting Incentives of Employer and Inventor Recognition v. Avoiding Rejection of Inventions – Prior Art and Double Patenting

9. Employer and Employee – No Automatic Ownership Common Law Position. Sterling Case. Unlike copyright, Patents developed in the course of employment do not belong to the employer. Contractual Protection. a. Assignment of Invention b. Assignment of the Right to Apply for Patent

10. Assignment after invention. Validity of Assignment even before the Invention. Failure to execute the Assignment after invention. Remedies

11.  Section 39 prohibits any person resident in India from filing a patent application outside India for any invention without the prior written permission of the Controller of patents.  Prohibition Direct and Indirect – “Make or Cause to be made  Indian Filing Atleast 6 Weeks Before before the application outside India is made  Prohibition will not apply if the license has been filed by a person resident outside India with respect to the same invention.  Resident of Applicant v. Place of Invention  No Exception for Joint Applicants

12.  Law Commission – Outer Deadline of weeks months for considertation of application  Specified Inventions – Defence– Controller will have to take prior consent of Government  Failure to Comply – Abandonment of Patent Applicaton or Revocation of Patent  Decision of Controller is Final, but is subject to judicial review.  Secrecy Directions by Government Specified Categories of Inventions

13.  Captive v. Independent Non-exclusive Development  Contract ownership, assignment, filing, and prosecution  Past IP required for execution of Project.  Created IP  Termination  Assignment and Prosecution Obligations post Termination.

14.  Absence of Statutory Framework  Contractual Negotiation.  Terms of Negotiation may include payment ◦ Upon invention ◦ Upon Assignment ◦ Percentage of Royalties