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MIP Patents > Week 5 > Flashcards

Week 5 Flashcards

Right to an invention. Ownership vs. inventorship. Co-authorship. Inventive contribution. Employees’ inventions. Right to remuneration. Ownership of university inventions.

1
Q

What is lecture 5 about?

A

Right to an invention. Ownership vs. inventorship. Co-authorship.
Inventive contribution. Employees’ inventions. Right to remuneration. Ownership of university inventions.

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2
Q

What it is the inventorship?

A

An inventor is a person who made the invention, that the person who undertakes an inventive activity, which has resulted in the creation of an invention.

An inventor (the author of the inventions) is always a natural person

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3
Q

What it is a co-inventorship?

A

“Joint inventors”, or “co-inventors”, exist when a patentable invention is the result of inventive work of more than one inventor.

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4
Q

What it is the ownership?

A

A legal person, a company can never be formally named as the author of an invention, but can under some circumstances discussed later be an owner of invention.

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5
Q

What it is a co-ownership of an invention?

A

Intellectual property rights are the way by which intellectual property can be protected and give legal recognition to the ownership of intellectual property. A patent is an exclusive right granted for an invention. A patent owner has the right to decide who may, or may not, use the patented invention.

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6
Q

What it is a special category of employees invention?

A

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7
Q

What are special rules concerning ownership of university inventions?

A

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8
Q

What it is a right to an invention?

A

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9
Q

What is the difference between Ownership vs. inventorship?

A

1

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10
Q

What it is an inventive contribution?

A

1

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11
Q

What it is a employees’ inventions?

A

an employee invention can be defined as an invention created by a natural person, the employee working under employment contract for another natural or legal person, the employer.

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12
Q

What it is the right to remuneration?

A

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13
Q

What are two categories of the right to the invention?

A
  • moral right, non-transferable right

- the economic transferable right to a patent.

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14
Q

What is non-transferable right?

A

moral right or non-transferable right is to be recognized as the author of the invention. this right cannot be waived or transfer, and is always attributed to the author of Invention.

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15
Q

What is transferable right?

A

economic right which provides the possibility to transfer right to apply and obtain the patent.

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16
Q

What is an invention?

A

An invention as another subject of protection by IP rights is a result of the intellectual creation of a human. Whoever creates the invention is the inventor.

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17
Q

Rule:

A

All rights the invention originally belonged to the inventor of the successor in title. Please take in mind and remember this as the main rule.

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18
Q

Mr Hans Mauritz is a US national employed by a German company based in Munich and having its laboratories in the UK and France, established and operated under the relevant national laws. Mr Mauritz spent 6 months working during an internship in each of the laboratories where he has developed an invention for which a European patent has been granted. Under the national laws of which country should the right to this invention be determined?

A

Germany as the country where the employee is mainly employed

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19
Q

Does the inventor have a right to be recognized as an author even an invention is transferred to the third party?

A

when the right to an invention is transferred to the third party, the original author of the invention keeps the right to be recognized so being named as the inventor.

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20
Q

Who is the successor in the title?

A

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21
Q

1

A

Patent protection for the invention can be grounded to original inventor but also to other person or entity which has acquired the right to the invention and the transfer agreement assign with the inventor of under special provisions of governing patent regulations

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22
Q

the right to invention belongs to inventors jointly, called co-inventor.

A

often a number of inventors must jointly contribute to the creation of a single invention

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23
Q

Who is the co-inventor?

A

it is the subject of facts not law. there is no legal definition as such. mainly should be included the contribution to the creation of a single invention then, therefore, the person can be called co-inventor.

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24
Q

What are non-inventive contributions (activities)?

A

merely providing an inventive concept of the abstract idea
only posing the problem To be solved by the invention
providing a mere suggestion as to what is to be included in the patented the subject-matter( insuring ordinary assistance applying or sharing information data are also not considered as an inventive contribution)
supplying research tools providing laboratory space
Sharing the information data, as well as
performing tests (even those) further used for the purpose of inventive activities, as well as
providing technical support in research activities (including operating professional research facilities) also
merely supervising inventive activities or
providing personal or financial aid again

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25
Q

1

A

As clarified mere involvement in research and development activities are not enough to create co-inventorship or co-ownership of an invention.

26
Q

1

A

It is important to underline that co-inventors do not need to work together or simultaneously on an invention. Each co-inventor has to simply contribute in an innovative manner to the solution of the technical problem underpinning the invention, but not necessarily have to make the same time type or amount of contribution, or not necessarily make a contribution to the subject-matter of every claim of patented invention.

27
Q

joint owners of invention

A

joint ownership of invention frequently arises in the collaborative project, joint ventures, and strategic alliances. Or other forms of arrangement involving several parties. When the results have been jointly generated by inventors who are often employed by partners or parties.

28
Q

Employee invention:

A

Agreement:

1) Employment agreement
2) Other agreement employees/employer

Statutory regimes:

1) National Patent law
2) National regulation on employee’s creations
3) Regional patent regulation

29
Q

Service inventions

A

inventions created by the employment contract and regular employment duties.

30
Q

Free interventions

A

all inventions which are made by an employee during an employment contract, but which are not related to his employment duties

31
Q

Service-related inventions

A

Created by an employee who was not hired specifically for the purpose of inventing, but nonetheless accomplished an invention by using the employer’s time, materials or equipment while creating the patented invention

32
Q

Criteria for determining service -inventions:

A
  • the invention is the result of an inventive mission committed to the employee
  • the invention is related to the execution of the employees function
  • the invention was made during the course of the empoyee’s normal duties
  • the employee had a special obligation to further the interests of the employer’s undertaking
  • an invention was created during a course of tasks specially assigned to the employee
33
Q

free inventions

A

under free invention regime which is applicable when an employee is not hired especially for the purpose of inventing, an employee as an inventor according to general rule, keeps the right to the invention.

34
Q

service related invention

A

If employee was not hired especially for the purpose of inventing, and as was mentioned before, but nonetheless accomplished an invention by using the employer’s time materials, equipment increasing the patented invention, the employer usually acquires some rights over the exploitation of such inventions. So the ownership remain on the employee but employer as mentioned have some special rights for the exploitation of such invention.

35
Q

Table

A

Service invention:

-Circumstances under which the invention was created:
the invention made during the course of the employee’s inventive duties
-Ownership:
Employer
-Inventorship:
Employee

-Circumstances under which the invention was created:
Invention made by the employee not hired for the purpose of inventing, but involving the use the employers time, materials or equipment
-Ownership:
Employee but rights of the employer over the exploitation of such invention
-Inventorship:
Employee

-Circumstances under which the invention was created:
The invention made by the employee not hired for the purpose of inventing

-Ownership:
Employee, but possibility to acquire by the employer under the agreement with employee

-Inventorship:
Employee

36
Q

1

A
  • the invention should be particularly profitable to the employer as provided in UK patent law, or law in Greece
  • personal contribution and it’s important should exceed the consent on the employment contract this regulation is provided Spain for example
  • or the value of the right the employer has taken over should exceed what the employees expected to render in the form of benefits that come in the with deep his position.
37
Q

A compensation may involve:

A
  • cash bonuses
  • grant of stocks/stock options
  • promotion
  • awards in and outside company
38
Q

possible methods used for the calculation of an employee’s remuneration:

A
  • as a certain percentage of the internal cost savings which the employer archives by using the invention
  • as a certain percentage based on the net sales made by the employer
  • a certain percentage of reasonable royalty which the licensee would ordinarily pay
  • a free estimation of the value of the invention, in which the inventor has the right to participate
  • a fixed amount agreed in an employment contract
39
Q

Shanks v Unilever Plc & Ors 2017

A

case based on an interpretation of the previously mentioned provision on the EU patent law providing that an employee is entitled to a fair share of this benefit if an employee derives an standing benefit from exploitation of invention. in this case professor Shang’s invented the technology and then signing his rights to unit-liver, who then licensed the technology successfully, Shangs sued Unilever for compensation, and what is interesting even though it was calculated by the court that the invention was commercialized with commercial success and that Unilever had received a benefit of around 25 million English pounds, Shang’s technology, from Shang’s technology interestingly, this amount was not sufficient for the court to meet the outstanding benefit requirement. Because uni-liver regularly used to make much higher profits that the mention amounts. According to the court and the amount of 25 million pounds represented only small portion of its profits. Thus it was not considered by the English High Courts outstanding benefit and Professor Shang was not compensated.

40
Q

What are two models of ownership of invention are used regard the University?

A
  • institutional ownership

- individual ownership or professor privilege regime

41
Q

institutional ownership:

A

called institutional ownership, under which the right to an invention developed, created by researcher professor in the framework of publicly funded research belongs to the institution which employs such a researcher, and this type of institutional ownership is the most frequently applied and all around the worlds and is recognized by most countries in Europe, Germany, United Kingdom, Spain but also U.S. as well as other countries, Brazil, China Japan, Kenya, Thailand

42
Q

individual ownership or professor privilege regime

A

under which university professor and researchers keep and have full rights to invention they created. this allows them and not the institution to decide whether or not to patent and commercialize such invention and how to further develop their discoveries, even when underlying research was supported by public funds.

43
Q

What is institutional ownership:

A

called institutional ownership, under which the right to an invention developed, created by researcher professor in the framework of publicly funded research belongs to the institution which employs such a researcher, and this type of institutional ownership is the most frequently applied and all around the worlds and is recognized by most countries in Europe, Germany, United Kingdom, Spain but also U.S. as well as other countries, Brazil, China Japan, Kenya, Thailand

44
Q

What is an individual ownership or professor privilege regime

A

under which university professor and researchers keep and have full rights to invention they created. this allows them and not the institution to decide whether or not to patent and commercialize such invention and how to further develop their discoveries, even when underlying research was supported by public funds.

45
Q

Who is the Inventor?

A

The person who made the Invention or the Author of the Invention

46
Q

Can a Company be the Author of an Invention?

A

No legal entity can be the Author of an Invention.

47
Q

Can an Inventor/Author of an Invention transfer the rights to another

A

Once recognized as the Inventor/Author of an invention that right is non-transferable

48
Q

If the rights to an Invention are transferred does the original Author of the invention remain recognized as the inventor

A

Yes

49
Q

If more than one person collaborates in an invention who is recognized as the Inventor?

A

All of those who collaborated are jointly recognized as the inventors

50
Q

Does a person who contributes financially to an invention have the right to be recognized as a joint inventor?

A

No

51
Q

Does the person who provides the original concept for the invention have the right to be recognized as a joint inventor?

A

No

52
Q

Does each joint owner have the same interest in the invention?

A

No, it is normal for an agreement to be in place as to how much each joint inventor has of the invention, usually related to their contribution

53
Q

Does an employee of a company who invents a patentable invention whilst employed by that company have the right to that invention?

A

This situation varies from Country to Country and is classed as a separate category known as “ Employee Inventions.”

54
Q

What are the two categories of employee inventions know as?

A

1 Service inventions

2 Free inventions

55
Q

What is a Service invention?

A

An invention made by an employee who was not employed for the purpose of making an invention but still did so on his employer time

56
Q

What is a Free Invention?

A

An invention made by an employee during an employment contract

57
Q

Does an employee who invents under the Free invention category retain the Patented rights to the invention?

A

Not normally.

58
Q

Does an employee who invents under the Service invention category retain the patented rights to the invention?

A

Usually, but the employer is normally compensated in some way

59
Q

What is Institutional Ownership of an Invention?

A

The University retains ownership of any invention made by a research Professor working for that University

60
Q

What is a Professor Privilege Regime?

A

It is a Professor who keeps the rights to any invention he makes whilst in the employ of the University

61
Q

Are there any rules which help the inventors whose inventions were created at University?

A

Some national laws have introduced a 50/50 rule but this is not yet universal

MIP Patents (14 decks)

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