Información adicional

The purpose of this thesis is to illustrate the legal framework and the challenges related to the complex of laws in a multinational company operating in a global business wherein patents play a significant role and wherein inventions made by employees (and subcontracted inventors) are valuable assets for the company. This includes a variety of legal questions such as 1) who owns the invention made by an

employee, 2) how are rights effectively transferred from the inventor to the employer,

3) does the employer have a duty to pay compensation for the rights and 4) how is

the validity of entitlement and the effective securement of inventions ensured globally?

This thesis aims to first explore the complexity of a property aspect related to

employees’ inventions, namely the different kinds of mechanisms for transferring the

rights to inventions made by employees in the different employment regimes. Since valid entitlement is an essential prerequisite for a company seeking patent protection for inventions made by its employees, it is very important for multinational companies with global operations to be aware of and to comply with the variety of regulations in the different jurisdictions. Further, the movement of employees within the company can cause situations where it is unclear which law should be applied. Peculiarities also exist in certain jurisdictions that are worth exploring in further detail, as some of these junctures may hinder the effective transfer of entitlement from the inventor(s) to the company. This may harm securing patent protection effectively for inventions that they have made. The challenges of addressing the

variety of country-specific differences in a company’s invention management procedures are highlighted and presented with help of case examples, with some

added complexity in the context of third-party collaboration. One part of valid entitlement is the compensation to be paid for the rights to inventions. Indeed, in contractual jurisdictions an assignment lacking adequate consideration can be considered invalid, thus affecting the employer’s rights to the invention. In statutory jurisdictions compensation is an obligation derived from the transfer of rights, the criteria for which varies between statutory countries. This, in turn, causes challenges

in managing inventions in the disharmonized compensation system.

Secondly, the thesis explores the effective securement of inventions. This relates to specific national security provisions that set requirements for the place of filing the first patent application for an invention in certain cases. Non-compliance with these requirements risks the validity of the patent in the respective country. Therefore, it is important for the company operating in countries with such

provisions - and for any applicant seeking patent protection in such a country - to be duly aware of and comply with these specific filing requirements.

The third, and the most prominent, aspect explored is how to deal with all the aforementioned issues in the complex of laws -situations which take place in cross-

border collaboration within a multinational company where an invention is the joint

effort of multiple contributors originating from different jurisdictions. Arising conflicts of law are not traditional conflicts of laws, where ultimately one law applies, but the company must comply with all the conflicting or mutually exclusive national laws in order to secure valid entitlement to and global patent protection for the invention in relevant markets. A further dimension to this is the issue of compensation, which may place the company in an awkward position between legal obligations and equality for employees originating from different countries with different employment laws. Discrepancies in a company’s compensation scheme might even affect how innovative activities within the company are arranged.

The research question can be boiled down to How can the different employment

and patent regimes be interfaced when seeking patent protection for global inventions? For companies seeking global patent protection for inventions made by

their employees, it is not sufficient to merely comply with the general requirements of patentability. In order to apply for and to effectively utilize patents the company needs to have valid entitlement to the inventions. Further, to secure valid patent protection globally, the patents also need to comply with the national security provisions of the relevant countries. This scenario which is not in any way restricted to multinational companies could be described as a “simple complex of laws” (see Figure 2). The multinational companies seeking patent protection for global inventions made by their employees in turn need to comply with the simultaneously applicable, sometimes mutually exclusive, requirements of the national laws, in securing their rights to and valid protection for the patents worldwide (a “complex complex of laws”, see Figure 3).

Finally, due to challenges related to addressing country-specific differences and managing inventions in a disharmonized system this thesis explores whether it is

possible to adopt a holistic approach which addresses national differences and

peculiarities, and to apply the same policy globally to all inventions in a company. Each of the aspects mentioned are discussed separately regarding whether one size

fits all, namely whether it is possible to apply a global company policy for acquiring

rights and compensating them. Adopting the holistic approach is discussed also in the context of possibly harmonizing the provisions, namely whether a global