International Patent Filing and Inventors’ Rights
“In some countries, for inventions made by employees in the course of their employment, it is critical to ask (1) who owns the invention—the employer or employee?—and (2) Is an employee entitled to additional remuneration over and above their contracted compensation?”
Filing a patent internationally demands attention to many considerations, including subject matter, where to file, budgets, timing, translations, and local legal and procedural frameworks. There are several jurisdiction-specific legal issues related to filing of patent applications that are more commonly appreciated such as the need to recognize where the subject invention was made and the citizenship and residency of the inventors.
As corporations reach across the world for innovative ideas, it becomes increasingly important for companies and inventors to be aware of local laws and rules regarding the jurisdiction in which a patent application must be first filed. If a patent application is first filed in a jurisdiction not permitted by these laws and rules a patent maturing from the application or a subsequently filed application claiming priority to the improperly filed application could be found invalid. Many countries have laws that require a patent directed to an invention made by a citizen or a resident of that country to be filed in that country first – prior to filing corresponding applications in other countries. In some countries it is the citizenship or residency of the inventor that is the deciding factor as to where the patent application must be first filed, while in other countries the deciding factor is where the invention was made regardless of the citizenship or residency of the inventor.
Foreign Filing Licenses
For patent applications with multiple inventors whose citizenships, residencies, or working locations are in different countries, a conflict may thus arise as to where the application must be first filed. To accommodate these situations, most countries have a process for applying for a foreign filing license that permits an applicant to first file an application outside of the country dictated by the normal rules of first filing. Such foreign filing licenses are typically granted by most countries for most technologies; however, the majority of countries will not grant foreign filing licenses for innovations in certain technological areas, such as those related to national defense or to nuclear power.
Fair Payment for Inventors
There are other important legal considerations that that many may not appreciate, for example with regard to inventor rights and remuneration. A granted patent will allow a patent holder to exclude others from making, using, and selling the invention for a specific period of time. However, in some countries, for inventions made by employees in the course of their employment, it is critical to ask (1) who owns the invention—the employer or employee?—and (2) Is an employee entitled to additional remuneration over and above their contracted compensation? For most countries that are signatories of the Paris Convention, inventors have a right to be named in patent applications, and some countries even provide further rights for inventors. While certain countries allow employee/employer contracts to define inventor rights and related compensation, other countries have provided legislation to ensure fair payment to inventors by employers for inventions made during their employment.
In countries such as China and Japan, employment contracts are particularly important. These contracts provide protection and guarantees for both the employer and employee in determining compensation for inventive activities. In cases where there is no contract, and in China specifically, compensation may be determined by the courts.
In most countries, employers own the intellectual property developed by their employees during the term of their employment and the employer may apply for patents on that intellectual property. But there are some exceptions. In India, Japan, South Korea, and the United States for example, absent a contract specifying that an employer owns the inventions of its employees, employees may apply in their own names for patents on inventions made during their employment. In Italy, employers generally own the inventions of their employees, however, employees of universities, public research institutions, and certain hospitals may apply for patents in their own name if the employer does not apply for a patent on the employee’s invention within nine months. Regardless of the location of inventive activity, employers should be sure to include terms regarding ownership of intellectual property in their employment agreements to ensure the company may obtain the rights to IP developed by their employees.
Company Obligations
In many countries, for example, the United States, there is no law requiring a company to compensate employees for the development of an invention. However, if terms of compensation for inventive activity are outlined in an employment contract, compensation may be provided to employees if a patent application is filed naming the employee as an inventor. In other countries, for example, Germany, China, Japan, and South Korea, there are statutory rules requiring that fair compensation be provided by a company to employee-inventors upon filing of a patent directed to their invention. For employers, the costs for compensation to their employee-inventors should be considered when budgeting for preparation and filing of a patent application.
Additional rules regarding duties owed by employers to employee-inventors exist in some countries. Employers in South Korea and Finland, for example, have deadlines by which they must notify employee-inventors if they intend to acquire rights to an invention. In France, an employer must notify an employee-inventor of the filing of a patent application directed to their invention as well as notify the employee-inventor when the patent issues. In Germany, if an employer has not fully compensated an employee for their inventive activity and intends to stop prosecuting a related patent application or to surrender an issued patent, the employer must inform the employee accordingly and, at the employee’s request and expense, must assign the rights and provide any documents necessary to maintain the IP rights. As noted, depending on the country, there are several considerations to be aware of regarding employer-employee rights for inventions created at the workplace. It is necessary to take into account these rules and procedures and plan accordingly, perhaps even as far as where to locate research and development activities.
At a Glance
Below is a summary of inventor rights in various countries. In this summary we focus on (1) inventor’s right to be named in an application; (2) inventor’s right to be notified of company action regarding the invention; (3) rules or practices regarding inventor remuneration; and (4) employer rights.
Of course, for specific questions, we always recommend contacting an agent local to the jurisdiction.
Image Source: Deposit Photos
Author: BrianAJackson
Image ID: 24533575
