2.1 Estado del Arte
2.1.2 Experiencia ecuatoriana
Ownership is seen as the primary and predominant issue for property rights, including patent right. However, utilizing patents does not necessarily require ownership to them. In order to utilize a patented technology for one’s own products it is sufficient to have the right to use the patent, namely a license. However, applying for a patent and gaining monetary benefits from patents by providing others the right to use one’s own patented technology requires ownership to the patents, namely to the patented inventions. According to patent laws worldwide the initial rights to an invention, including ownership, belong to the creator of the invention. The inventor has the right to possess their own invention, namely a proprietary right, in the first place. In cases of multiple inventors, inventors have the right jointly, as co-owners.
How to then define who is the inventor? When an invention is created by a sole inventor, the identity of the inventor should be clear. It is assumed that the individual named as the inventor in the patent application is also the sole creator of the invention. However, when multiple persons have jointly contributed to the conception of an invention it is not necessarily straightforward that all of them are considered and designated as inventor(s). A lack of clarity in this respect can arise for example when the invention in question results from a brainstorming meeting where one person has come up with an idea which has then been further developed in discussions with the others. After the meeting, it may be unclear who contributed which elements to the invention. The concept of inventorship is defined in the national patent laws. However, as a general rule, becoming an inventor from the point of view of the patent law requires that a certain level of contribution to the patentable elements of the invention have been met. The patentable invention in a patent application is determined by the patent claims.187 Thus, the contribution typically must have been made in respect of one or more aspects defined in the claims. This means that the inventorship can also evolve during the patent 187 The substantial norm is that the patent claims define the scope of the patent. In the EPC, this is
expressed in the articles 69 & 84, in the U.S. in 35 U.S.C. § 112 and in Finland in the Finnish Patent Act, 8§.
prosecution, should for example the claim(s) by a specific inventor later be considered to be of a non-patentable nature.188 Further, as the patent provides territorial protection, and could in different countries be granted in a different form and with slightly different claims, the inventors in the different countries can also differ. For the purposes of this thesis, an assumption needs to be made that in the global inventions subject to this thesis the contributors involved are considered as inventors according to the national laws applicable to them and remain inventors during the entire process.
Inventions are the result of intellectual activities. In other words, inventors are always natural persons. Their moral rights include the right to be designated in a patent application concerning the invention.189 In situations where there is a lack of clarity regarding inventorship, these moral rights can be subject to a violation by not acknowledging all the persons who have contributed to the patentable invention as the inventors in the patent application. But in addition, there can also be consequences for the validity of the patent if the inventors are not named properly. Namely, in the U.S. there is a doctrine referred to as the “True Inventors -doctrine” according to which failing to list all the true - and only the true - inventors in a patent application can render a patent invalid and enforceable.190 However, even if issues 188 As an example, there is case law from Japan, Tokyo District Court, 26 January 2006, Hanrei Jihõ No. 1943, 85 – ’Konika-Minolta’”. In this case, which was about demanding remuneration for an employee invention, the court held that ”the inventorship and the rates of contribution of joint inventors should be found with respect to each claim at the time of filing of the application, or at the time of laying open of the application and each claim at the time of registration (if any correction is made, each claim after the correction).”
189 For example, FI Patent Act, 8§.
190 The original authority for patent law and inventorship is found from the United States Constitution, Art. 1, S. 8, Cl. 8, often referred to as “Intellectual Property Clause”, which grants Congress the power “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It follows that an incorrect designation of an inventorship can invalidate an otherwise valid and valuable patent. See e.g. Jamesbury Corp.v. United States, 518 F.2d 1384, 1395 (Ct. Cl. 1975): “[T]he inclusion of more or less than the true inventors in the patent renders it void.”; Amax Fly Ash Corp. v. United States, 514 F.2d, 1041, 1050 (Ct. Cl. 1975). However, a defect in inventorship often may be corrected; it therefore is not absolutely invalidating. See Monsanto Co. v. Kamp, 269 F. Supp. 818, 824 (D.D.C. 1967): “A misjoinder or nonjoinder of joint inventions, does not invalidate a patent. An error in that respect may be corrected.” “However,
the question does remain crucial, because invalidation of the patent can only be avoided if correction is allowed by the Commissioner or ordered by the court. Furthermore, correction can only be sought if the correct joint inventors can be determined. If correction is not possible because deceptive intent is found, the result can be severe: The patent is invalidated due to improper inventor designation, and neither the fraudulent parties nor the true inventors obtain enforceable patent rights.” An excerpt from W. Fritz Fasse, ‘The Muddy Metaphysics of Joint
Inventorship: Cleaning up after the 1984 Amendments to 35 U.S.C. §116’ (1992) 5 Harvard Journal of Law & Technology, pp. 173-174.
related to inventorship can affect the validity of the patent and are thus relevant to the topic of this thesis, the concept of inventorship cannot be explored in further detail here. Therefore, a further assumption for the purpose of this thesis is that the rights to inventions are assigned to the employer by the true inventors, whose inventorship is not disputed afterwards. In other words, the potential impact of the inventorship possibly evolving during the patent prosecution is not specifically addressed here.191
Inventorship does not always correspond with ownership. Indeed, establishing inventorship represents only the starting point for determining patent right ownership.192 While inventors are always natural persons, the owner of an invention or of a patent can also be an organization, such as a company. As a property right, the proprietary right to an invention can be transferred by the inventor to another party, for example based on a contractual arrangement. The most typical situation of such a transfer is the assignment of the rights to an invention made in an employment relationship. Namely, the general legal principle in the field of employment law is that by virtue of an employment agreement the employer owns the results of the work done by its employees. This principle secures the normative position of the employer when an invention related to its business has been created in an employment relationship, utilizing the experience and the knowledge gained at the employer’s service, using the equipment provided by the employer and enabled by the financial investments of the employer.
According to Wolk, “[t]he ownership and control of intellectual property rights are crucial to the success of any business, and in order to maximise the value of intellectual property assets, it is necessary to maintain and effectively manage all associated ownership rights as well.”193 Nevertheless, at the same time as the importance and value of patents has increased in modern technological society, the legal situation regarding the ownership to inventions has become more obscure. It is no longer straight-forward to determine the owner of an invention as in the ancient industrial society, where making an invention, not to mention patenting it, was rather rare. The inventors at that time were almost always independent individuals, doing research work in their own laboratories and personally protecting their innovations. 191 For example, regarding compensation the changed inventorship could in theory affect the
payments to the inventors after the patent has been granted in a complex way, redefining the shares of the inventors from what they had been originally, and possibly even removing some of the inventors’ right to receive any compensation, part of which may have already been paid. 192 Steven Cherensky, ‘A Penny for Their Thoughts: Employee-Inventors, Preinvention Assignment
Agreements, Property and Personhood’ (1993) 81(2) California Law Review, p. 604.
193 Sanna Wolk, ‘EU Intellectual Property Law and Ownership in Employment Relationships’, in
Community Intellectual Property Law and Ownership in Employment Relations © Scandinavian
Indeed, during the first industrial revolution the invention was the province of the individual.194 The individual inventors were also typically the owners of their inventions. In contrast, in the contemporary world, the majority of all the research and development is done within companies and research centers by engineers and scientists hired to develop new and innovative product technologies. It is estimated that more than 80% of all inventions are made by the employed inventors in an employment relationship and their ownership usually vests with the employers.195 In fact, from the yearly statistics for patents filed globally, mostly by corporations196, an assumption can be made that the vast majority of the underlying inventions are assigned to these companies by their own employees.
The issue of ownership relates to one of the circles in the figure(s) describing the complex of laws. In the following, a variety of different rules regulating the ownership to inventions, as company assets, are introduced to provide an overview of the jungle of requirements that multinational companies in their intellectual property management needs to address. The selection of countries is based on the most differing and peculiar requirements, to illustrate the variety of rules multinational companies need to be aware of, and to comply with, when inventions flow to its centralized intellectual property department from all over the world. One example of the statutory regimes is Germany, even if it is not involved in the case examples where Finland represents the statutory regimes. Germany has been selected to the normative part of this thesis because the mechanism for acquiring the rights in the current German law differs greatly from other employee invention laws, and it is important to reflect that substantial differences can exist even between the statutory regimes. The complexity of cross-border inventions or the dilemma of the choice of law in connection with employee mobility are not yet addressed here. However, monitoring compliance with the different national laws in the company procedures 194 David J. Teece, Managing Intellectual Capital: Organizational, Strategic, and Policy
Dimensions, OUP USA – OSO 2000, p 53.
195 Rajesh Sagar and Aditya Nagarsheth, ‘Ownership of Employee Inventions and Remuneration: A Comparative Overview’, Queen Mary Intellectual Property Research Institute, University of London, July 2006, p. 3.
196 For example, according to publication “World Intellectual Property Indicators 2017” based on WIPO Statistics Database and EPO PATSTAT database, September 2017, the Top 100 list of applicants mainly comprises multinational companies. The top 10 patent applicants worldwide are Asia-based multinationals; Canon Inc. of Japan is the top applicant for the period from 2011- 2014, followed by Samsung Electronics of the Republic of Korea. The highest-ranking non-Asian applicant is Robert Bosch of Germany at ranking 12. Interestingly, applicants from 9 origins make up the top 100 list for the relevant period. Further, the list of the top 20 origins predominantly comprises of high-income countries. Nevertheless, regardless of the origin of the countries of the top applicants, it is easy to see that most of the patent applications filed worldwide are filed in the name of the corporations, which means that the inventors most probably are their employees. Figure A27, page 58.
even with sole inventions made in different employment regimes can be challenging. The following comparative review is mostly based on the laws – in the statutory countries written law and in the U.S. case law – as a primary source of directing the managing of company procedures. However, some practical insights will be provided to create value by connecting practice and context.197