Hi. I believe that in Switzerland, it is considered that an employee's invention automatically vests in the employer (not first vesting in the inventor). Therefore, no assignment from the inventor should be required for patent filing.
My question relates to recording ownership in places like the USPTO, which likes to see a chain of title passing from inventor to eventual final assignee. If a Swiss company has a US national stage invention and wished to record ownership, but has no assignment document from the Swiss inventors, what does it record?
And does the USPTO "get" the notion that in some countries, inventor-to-company assignment is not required for ownership of the invention to be in the company?
Many thanks.
In many (national) European patent laws it is stated that the employer 'owns' the inventions of its employees. In practice this then means that when filing a patent application in a European country - or for that matter at the EPO, since under the EPC entitlement to a patent is treated according to the national law - the application can be made by the employer and no assignment is needed.
Nevertheless, if the application then would be filed in the US - at least pre AIA - the inventors should be the applicants and the employer only could get ownership of the patent (application) through assignment. With the AIA this has now changed and the employer may be the actual applicant, but afaik the legal obligation of assignment still exists.
In other words: although the entitlement to the invention, which is based upon the relation between inventor and applicant, should be regarded with respect to the national law under which this relation is vested, the requirements for actually showing entitlement depend on the receiving office.
Thanks Bart for your helpful answer.
In practical terms, in my experience, in Europe, the employee-inventors are asked to sign an assignment upon US filing or upon PCT filing, and they usually do. After all, it's a small effort and they don't stand to lose anything. I also know of a company that gives a token gift of a value of a few 10s of Euros to the employees concerned.
Now of course, a wise employer, with a structured patenting approach, ensures that all this is arranged upon filing of the priority application, because employees may leave and become untraceable, or the relation may sour and the (ex)employee uses every (rational or irrational) method to annoy his (ex)employer. I know several companies that do, and I can only recommend it.
I have come across a few (two, if I recall correctly) cases in my career where the inventor could not be found/did not want to sign an assignment, but there are apparently (as adviced by the US patent attorneys we consulted) declarations that can be made under US law in lieu of a signed assignment. But don't ask me for details, I don't remember, I just want to indicate that there are, apparently, escapes.
If your question concerns a real-life case: consult your US patent attorney. They should know what to do.
Note that Bartmans' reply can be expanded a bit: This is, in general, only applicable to employees for whom doing inventions can be considered to be part of the job, and only if the invention is related to the job. For example: If the cleaner invents a new microprocessor, it is certainly not automatically owned by the employer.
This may lead to problems: Often rights to inventions/patent applications/patents are transfered between companies (legal entities) in the same group of companies, or even externally. If the first owner incorrectly assumed that it owned the patent due to the employment contract, all subsequent transfers may become invalid, which in turn may lead to priority issues and other problems. It's potentially a minefield, really.
As a US attorney working in an EU firm, I come across this question alot. I find that EU patent attorneys (which are not trained in law, but are more akin to us patent agents) have a great deal of difficulty with this topic due to jurisdictional influences.
This is my understanding:
1) Patent rights are national rights. Thus, the patent rights of say, Switzerland, operate entirely independently of the patent rights of Germany (or the US).
2) Some countries automatically vest rights (or give right of first refusal) to the employer. In these countries, that particular country's patent rights are transferred. For example, by automatically vesting in the employer in Germany, the DE patent right vests in the employer. However, this says nothing about the US (or other national) patent rights.
3) As a general matter of jurisdiction, one nation has no jurisdiction over another nation and thus CAN'T transfer the patent rights of another nation (absent some multinational agreement).
4) To the best of my knowledge, nothing in the PCT (or related) multinational agreements say anything about the transfer of rights in other nations.
Thus, when you talk about the "chain of patent rights" you must specify which country's chain of rights you are talking about. They are all independent of each other.
NOTE: Euro-Pat-Att seems to be confusing a "substitute declaration" with an assignment. A substitute declaration can be used to overcome the declaration requirements fairly easy (declarations are a creature of the USPTO and only bound by USPTO regulations).
However, an assignment is a creature of contract law and is bound by (state law created) contract principles. The USPTO will accept certain matters (e.g. an employment agreement) in lieu of an assignment to allow PROSECUTION of the case by an applicant (i.e. as between the applicant and the USPTO, this is accepted). However, the employment agreement, by itself is not a valid assignment. Rather, it is an "obligation to assign" which can be ratified by court order (should the inventor be unwilling to sign an actual assignment). If you wish to enforce this assignment outside of the USPTO, you will need a (legally complicit) assignment and not merely the USPTO's acceptance for purposes of prosecution.
I beg to differ in relation to points 2 and 3
In an employment situation, it's not the patent rights (as in 'patent' or 'patent application') that are usually transferred by law and/or employment contracts. Instead it is, in general, the right to determine what happens with an invention (does it get commercialized or shelved, will a patent be applied for or not, will there be any further development work or not). This is in line with the general entitlement of the employer to the fruits of the work of the employee performed under the employment contract.
Therefore, based on national law, the employer obtains ALL rights to the invention, including the right to apply for a patent, worldwide, or alternatively, to publish the invention, or to shelf it, or to sell it to the biggest competitor.
It is perfectly possible to transfer, under the laws of country A, the right to apply for a patent for an invention in country B. Now country B can be difficult and not recognize this transfer, or require confirmation in conformity with its own laws, or whatever, but those are just the intricacies of international law.
EvilLost is right that an assignment of a patent(application) is bound by contract principles. I do not know enough of international contract law to determine whether a US patent may be assigned by one party in Germany to another party in Germany under by a contract drafted according to German law (but my gut feeling is: yes), and whether a US judge or German judge would then be competent do decide on disputes.
But, the assignment of the right to all the fruits of the employees work, including the right to apply for a patent on a invention made by the employee, is a different matter. That is clearly governed by national law.
I would even go so far as to say that, by making an invention in an employment situation, the invention never is legally owned by the employee to begin with (but always by the employer), so that no assignment is needed.
Note, BTW, that in Europe the employee is usually bound by a confidentiality agreement and/or by legal provisions to the same effect, so that he may land himself in loads of trouble by filing, and having published, a patent application without his employers explicit permission.
Quote from: Euro-Pat-Att on 07-14-18 at 06:25 PM
I beg to differ in relation to points 2 and 3
In an employment situation, it's not the patent rights (as in 'patent' or 'patent application') that are usually transferred by law and/or employment contracts. Instead it is, in general, the right to determine what happens with an invention (does it get commercialized or shelved, will a patent be applied for or not, will there be any further development work or not). This is in line with the general entitlement of the employer to the fruits of the work of the employee performed under the employment contract.
This was why I included the "rite of first refusal"; generally, I agree (and in some cases if the employer does not with to exercise the patent, the inventor-employee will be given an opportunity to do so).
Therefore, based on national law, the employer obtains ALL rights to the invention, including the right to apply for a patent, worldwide, or alternatively, to publish the invention, or to shelf it, or to sell it to the biggest competitor.
It is perfectly possible to transfer, under the laws of country A, the right to apply for a patent for an invention in country B. Now country B can be difficult and not recognize this transfer, or require confirmation in conformity with its own laws, or whatever, but those are just the intricacies of international law.
I have to disagree here. In theory, "anyone" can do "anything."
This isn't "just an intricacy" of international law; it is a core tenet of jurisidiction.
Patent rights are national rights. They only have as much value as the ability to enforce them. Enforcing a patent right can only be done in accordance with THAT nation's patent laws. Thus, regardless of what any other nation (or entity, really) says about Nation B's patent rights, ONLY Nation B can dictate how nation B's patent rights are transferred (and enforced). If another entity attempts to transfer nation B's patent rights, the transfer is only meaningful in so far as it was done in accordance with nation B's laws. Anything else is wholly irrelevant with respect to the patent rights.
Note, however, that other remedies may exist in country A (i.e. contractual).
EvilLost is right that an assignment of a patent(application) is bound by contract principles. I do not know enough of international contract law to determine whether a US patent may be assigned by one party in Germany to another party in Germany under by a contract drafted according to German law (but my gut feeling is: yes), and whether a US judge or German judge would then be competent do decide on disputes.
This is a general contract matter. You seem to be combining two different points though; under a "choice of law" provision, any places law could be chosen as prevailing law by the contracting parties. However, choice of law does not have any impact on venue; simply because German law was chosen does not mean a German venue is appropriate....in that case (assuming a US court was the appropriate venue) a US judge would apply German choice of law in interpreting the contract.
However, choice of law simply decides which countries laws interpret the contract. It does not mean that other (i.e. non-contractual) law would necessarily be applied.
But, the assignment of the right to all the fruits of the employees work, including the right to apply for a patent on a invention made by the employee, is a different matter. That is clearly governed by national law.
I would even go so far as to say that, by making an invention in an employment situation, the invention never is legally owned by the employee to begin with (but always by the employer), so that no assignment is needed.
I do not agree with this at all.
Under US law, the US patent right (i.e. the national right) -always- vests in the INVENTOR.
It is not possible for any other nation to say "...but, under German law, the US national patent right goes to the employee!" German law has no power over the US national patent right. German law can only control the German national patent right.
If you do not have a proper assignment under US law, then your entire chain of ownership is broken. If an employer cannot establish a proper chain of ownership, then the employer will have no standing to enforce or defend the patent rights.
There is a huge difference between satisfying the USPTO (i.e. to be allowed to prosecute an application) VS. effecting a legally valid transfer of rights. A transfer of patent rights is no different than any other legal right and the assignment used is the same as any assignment under general contract principles.
Obviously you know a lot more about these things than I do, but I find some aspects of what you write hard to believe. I'd appreciate if you could comment further for my enlightenment.
I doubt that the right to file a US patent (not the patent application itself) can not be transferred under the laws of a different jurisdiction.
Party A and party B, both in Germany for instance, can agree to transfer between them, under German law, the ownership of a bicycle that happens to be in the US. Right?
Party A can also transfer the voting rights associated with his Microsoft shares, to be exercised only in the US, to party B, under German law, right?
Why can then the right to apply for a patent on an invention, made by A, but paid for by B, not be transfered under German law (together with all the other results from the labour agreement)?
Further, I wonder what happens if a court in Germany decides that, under German contract and labour laws, all expolitable results from an employment contract in Germany, including the right to apply for a patent, or not, worldwide, were transfered to the employer (or worse, were never even the employee's).
I'd find it hard to believe that a US court would then shift this decision, which was clearly within the competence of the German courts, aside. There are plenty of case in which the US courts recognise foreign decisions, eg relating to property disputes, or in relation to getting married or getting divorced.
Now you may argue that a decision wrt the right to apply for a US patent is outside the competence of the German court, and 'all exploitable results', as in the example above, do not include the right to apply for a US patent.
This may de-facto well be the case in practice (indeed, as you say, patent rigths have only as much value as the ability to enforce them). In my view that would then be a case of the US courts assuming this competence and getting away with it, contrary to the logical consequences of international contract law, and, dare I say, contrary to the spirit of international contract law.
I am not so much doubting that the US courts assume they are competent, and that in practice you are right.
I am instead abhorred by the logical consequence: that a German court is NOT exclusively competent to decide on all ownership conflicts between two Germans in Germany resulting from a contract under German law with the work done exclusively in Germany.
Quote from: Euro-Pat-Att on 07-16-18 at 08:00 PM
Obviously you know a lot more about these things than I do, but I find some aspects of what you write hard to believe. I'd appreciate if you could comment further for my enlightenment.
I doubt that the right to file a US patent (not the patent application itself) can not be transferred under the laws of a different jurisdiction.
I don't believe you can assign this right directly. Only "the inventor, or a person to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions."
Note, however, that you could assign the patent to the person, who would then meet the legal requirements and could then file for the patent.
See MPEP 605:
The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73. An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application
Party A and party B, both in Germany for instance, can agree to transfer between them, under German law, the ownership of a bicycle that happens to be in the US. Right?
Party A can also transfer the voting rights associated with his Microsoft shares, to be exercised only in the US, to party B, under German law, right?
Why can then the right to apply for a patent on an invention, made by A, but paid for by B, not be transfered under German law (together with all the other results from the labour agreement)?
A few points here:
What exactly do you mean "transfer under German law"? And who are you expecting to enforce (i.e. verify the "validity") of the transfer? It matters!
1) On its surface, the bicycle and MS shares examples both require an explicit assignment (contract) that could choose German choice of law.....but this would still be a contractual transfer of rights (and such a contract could be, but might not be, enforcable under US law).
If the bicycle is in Germany, then a German court could interpret the contract (using the German, or whatever, choice of law) and enforce it (since the German court has jurisdiction over the bicycle). However, a US court could not. Even if the US court found the contract/transfer valid, the US court has no jurisdiction over a bicycle located in Germany.
2) Lets assume there was no assignment/contract in the above examples, but rather that "german law" itself automatically initiated the transfers (akin to patent rights).
If the bicycle is in Germany, and "automatically" transferred ownership under German law, then of course a German court could uphold it. However, if the bicycle was in the USA, then even if German law automatically transferred ownership, and even if a German court recognized this transfer of ownership, the German court would have no jurisdiction over the property itself to make the transfer. (In other words, the German court lacks in rem jurisdiction over the US patent rights).
If the bicycle is in the USA, and if German law automatically transferred ownership of the bicycle, a US court is under no duty to enforce the German law. A US court is bound by US laws, not German laws. Unless there exists some US law that forces enforcement of a German law (such as a treaty, etc; generally not applicable) a US court will only care about US law. (Note: don't confuse this situation with the "choice of law" provision when interpreting a contract; in this example there is no contract since we are assuming the german law "inherently" invokes the transfer of rights).
3)The bicycle and MS shares are both examples of personal property. A patent also has characteristics of personal property, but the right to FILE a patent does not. If the right to file a patent is not a personal property right, then you cannot transfer it as if it was one.
I exceeded character limit, so I have to post this in two parts...
Quote from: Euro-Pat-Att on 07-16-18 at 08:00 PM
Further, I wonder what happens if a court in Germany decides that, under German contract and labour laws, all expolitable results from an employment contract in Germany, including the right to apply for a patent, or not, worldwide, were transfered to the employer (or worse, were never even the employee's).
A court must first be given a power (by a competent authority) before it can exercise it. What competent authority exists to provide worldwide jurisdiction?
I don't think a German court would ever make such a finding because a German court does not have jurisdiction over worldwide matters. Even if it did make such a finding, this finding would not be holding for courts in other countries (i.e. other jurisdictions). For example, a finding at the German Supreme Court would be binding on all lower German courts because the German SC has jurisdiction over all lesser courts. The same is not true for courts of other countries (and certainly a lower court can never bind a higher court).
I'd find it hard to believe that a US court would then shift this decision, which was clearly within the competence of the German courts, aside. There are plenty of case in which the US courts recognise foreign decisions, eg relating to property disputes, or in relation to getting married or getting divorced.
It is absolutely outside the power of the German court.
The examples you mentioned aren't really on point. Regarding marriage, this isn't a personal property right (and I assure you the US would not recognize an otherwise legal (in country X), under-age marriage).
Think of this another way: If the US court was "forced" to uphold the German ruling, then this would mean that any outside nation could usurp US laws by simply passing their own national laws. Do you honestly expect a US court to uphold a German law that directly contradicts with the US law directed at the exact same content? It seems like the basis for your assumption is entirely on the location of the invention (which has no bearing on the national patent rights).
Now you may argue that a decision wrt the right to apply for a US patent is outside the competence of the German court, and 'all exploitable results', as in the example above, do not include the right to apply for a US patent.
This may de-facto well be the case in practice (indeed, as you say, patent rigths have only as much value as the ability to enforce them). In my view that would then be a case of the US courts assuming this competence and getting away with it, contrary to the logical consequences of international contract law, and, dare I say, contrary to the spirit of international contract law.
I'm not sure what you mean by "international contract law" or its spirit. There is no such thing as "international contract law"...???
I am not so much doubting that the US courts assume they are competent, and that in practice you are right.
I am instead abhorred by the logical consequence: that a German court is NOT exclusively competent to decide on all ownership conflicts between two Germans in Germany resulting from a contract under German law with the work done exclusively in Germany.
A court MUST have (personal, subject matter, and/or property) jurisdiction over a dispute before it can do anything. A german court clearly has no subject matter or property jurisdiction over US patent rights. Having personal jurisdiction over the people is not enough. Without jurisdiction over the property right, the court has no power to do anything.
Also, this isn't resulting from a contract. German national law is not a contract between the two parties.
To be absolutely clear, a German contract (assignment) can and very well is enforceable in the US (location of formation has little to do with enforcability of the contract). What we are talking about here is the "automatic" transfer of ownership via national law.
Thanks for your elaborate explanation. Most enlightning.
Yes, we are talking about the automatic transfer of ownership [let's say based on national law combined with standard national employment contract practices, so perhaps not 100% automatic].
You wrote: 'If the US court was "forced" to uphold the German ruling, then this would mean that any outside nation could usurp US laws by simply passing their own national laws. Do you honestly expect a US court to uphold a German law that directly contradicts with the US law directed at the exact same content? '
But it works both ways: The way you describe things, US law interferes with national law in other countries in relation to what two parties in these other countries can agree among themselves, specifically the transfer of the ownership of an invention in an employment situation.
You wrote 'A german court clearly has no subject matter or property jurisdiction over US patent rights'. True, but I still think that there is a case to be made that all rights to the invention were transferred automatically already before there was even a consideration made whether to apply for a patent or not, or even a hint of idea that this might be a patentable invention, so before US patent law even came into play. The only logical conclusion is then that the jurisdiction that the US court might have, is over an empty case, water under the bridge, assigned already, nothing to decide.
I find it strange that the US court would have property jurisdiction before there is a US property:a patent application. The invention as a property, before US filing (or if you must: before considerations relating to any patent filing) is a foreign property, has no relation whatsoever with the US. (I suppose this one sentence summarizes all that I intended to write.)
Quote from: Euro-Pat-Att on 07-17-18 at 08:14 PM
Thanks for your elaborate explanation. Most enlightning.
Yes, we are talking about the automatic transfer of ownership [let's say based on national law combined with standard national employment contract practices, so perhaps not 100% automatic].
Just to be clear, we are talking about two different things here. First is the national law; second is the contractual agreement.
1) In some countries (like Germany), you only need to establish that you are an employee of the company. You do not need an "assignment clause" in your employment agreement or anything else. German national law automatically gives the employer the rite of first refusal on the patent resulting from employee's works. This will only be effective for a german national patent (the US will not care about german national law transferring things to the employer).
2) A clause in an employment agreement stating that the employee will assign inventions to the inventor creates "an obligation to assign" and can be valid (it is basically a contract). These types of agreements are perfectly valid everywhere.
The first will only work in DE (in places where German national law holds); the second will be enforceable most anywhere (in places where a contract is valid....which is basically everywhere).
You wrote: 'If the US court was "forced" to uphold the German ruling, then this would mean that any outside nation could usurp US laws by simply passing their own national laws. Do you honestly expect a US court to uphold a German law that directly contradicts with the US law directed at the exact same content? '
But it works both ways: The way you describe things, US law interferes with national law in other countries in relation to what two parties in these other countries can agree among themselves, specifically the transfer of the ownership of an invention in an employment situation.
Not exactly.
First, its important to note that this is not in relation "to what two parties....can agree among themselves..." A national law transferring ownership is NOT an agreement between the two parties. An actual contract/assignment between the two parties IS valid.
It does work in both ways in the sense that a US law could not control a German national patent right either. For example, imagine a German inventor living in the US and working for a US company. Obviously, the US patent rights would vest with the inventor (and assuming an obligation to assign in the work contract, the employee would then assign it to the employer). However, what about the German patent right? I am strongly of the position that the German national patent right, under German law, would still automatically vest in the employer (assuming the German inventor meets the requirements of being an "employee" under German law).
If each nation's laws can only control that nation's patent rights, there is no contradiction here.
You wrote 'A german court clearly has no subject matter or property jurisdiction over US patent rights'. True, but I still think that there is a case to be made that all rights to the invention were transferred automatically already before there was even a consideration made whether to apply for a patent or not, or even a hint of idea that this might be a patentable invention, so before US patent law even came into play. The only logical conclusion is then that the jurisdiction that the US court might have, is over an empty case, water under the bridge, assigned already, nothing to decide.
I don't entirely follow this statement. The consideration of applying for a patent or not is irrelevant as to the ownership of patent rights.
I find it strange that the US court would have property jurisdiction before there is a US property:a patent application. The invention as a property, before US filing (or if you must: before considerations relating to any patent filing) is a foreign property, has no relation whatsoever with the US. (I suppose this one sentence summarizes all that I intended to write.)
I don't know what you mean by the "invention" is "foreign property." The "invention" itself is nothing but an idea. You protect your idea by getting a patent on it (there are no other meaningful protections for "the invention" that I can think of).
The way I see it, the moment that "the invention" is created (thought up, whatever), then from that moment on the idea can be patented (or at least apply for one). At that moment, the national patent rights are also created. I cannot imagine any scenario where one has "the invention" but wherein a patent on that invention cannot be applied for. Can you provide an example of this?
Quote from: EvilLost on 07-17-18 at 09:29 PM
It does work in both ways in the sense that a US law could not control a German national patent right either. For example, imagine a German inventor living in the US and working for a US company. Obviously, the US patent rights would vest with the inventor (and assuming an obligation to assign in the work contract, the employee would then assign it to the employer). However, what about the German patent right? I am strongly of the position that the German national patent right, under German law, would still automatically vest in the employer (assuming the German inventor meets the requirements of being an "employee" under German law).
Hello. The breadth of this rather voluminous conversation is beyond my knowledge; however, I will comment on the one thing you mention above.
To the best of my recollection, the DE national inventorship law indicates that you are correct that a DE inventor resident in US and working for a US corporation falls under US law such that the invention vests in the inventor. It is up to the US corporation to obtain from the inventor an assignment of the invention, rights to file in the US and outside the US, and the rights to claim priority to that first US filing in filings to be made outside the US.
Now, as to the second part of what you say, I am not so sure this is correct. DE national inventorship law pertains only to inventors working for DE employers. In the scenario you put forth, there is not a DE employer.
Therefore, consider that same DE inventor resident in US and working for a US corporation. If the US corporation fails to secure for itself all the rights I mentioned, then (using the framework you have been modeling for us), the US rights certainly will remain vested in the inventor and he may make a US patent application.
There is no DE employer for any DE rights to vest in. Meanwhile, based on how they look at such rights in EU (including DE), besides the right to have made the US application, the rights also to file applications in EU and DE and the rights to claim priority to that first US application also reside in the owner of the invention - the inventor.
Again, I appreciate your effort.
Here's my take on the invention process:
R&D work gets done by an R&D person. The result of this R&D work is a body of results: experimental data, knowledge, some partially finished prototypes, a list of further possibilities to further explore/test, files full of concept drawings, results from a brainstorming session, you name it. There is not a single moment in time that these results are generated, it's an ongoing thing, the amount of results increases with time. This body of results is, under the employment agreement, clearly owned by the employer. I hope you don't disagree with this.
At this point in time there is no invention yet, and consequently there can't be an inventor either. And yet the results are, under national law, already the exclusive property of the employer, out of reach of US (patent) law.
At a certain point in time (scheduled or spontaneously) somebody (or a group) reviews the results and realises that there may be something in it that could be patentable. This somebody could be management, or the R&D person, or a result-reviewing patent attorney, or all together, it doesn't matter.
The essential point is: the invention can only be made after the R&D results are known, and these results are, immediately upon their generation, owned by the employer. At the moment the invention is identified, these results, tangible or not, are no longer the inventor's to freely use, but only by consent of his employer.
Even if you take the example of a lone engineer getting a budget from his boss to work for a full year without interference, and suddenly he sees the light and identifies an invention, the fact remains: He could only do that based on data, equipment, background information owned by his employer, to which he wouldn't have had access hadn't it been for his employer giving him access.
That's what I meant earlier: Before the invention is made (by whomever) it is undected in a body of R&D results. This period could be second or years, doesn't matter. By the time US patent law comes into play, ownership of the body of resukst including the invention, until that time unidentified and undetected inside the body of R&D results (which are possibly not even written out by the R&D person) has already been transferred to the employer.
Whether the invention is identified by the R&D team, or by a results reviewer, or by whomever, doesn't really matter. They are basically just acting as agents for their employer, doing nothing more than professionally processing information owned by, and provided to them for that specific purpose, by their employer.
An analogy could be: somebody finding gold on your land. Who's gold is it?
The R&D results generated by the employee are owned by the employer based on national law. And the identification of an invention in those results is a routine job expected of the employee.
I find it fascinating how your view and mine could be so different. To me an invention is a probable result of a sufficient amount of R&D work, and the person identified as the inventor just happened to be there at the right place and the right time. It can naturally only be the owner of the R&D results who qualifies for the right to apply for a patent on whatever of potential value is identified in those R&D results.
I also wonder about the following: Suppose, following your line of thought, that the employee-inventor is entitled to apply for a US patent and he does. And further suppose the invention turns out to be not novel. It could be said that in that case it wasn't even an invention, and the employee-inventor wasn't really the inventor. It would then lead to the absurd situation that in retrospect he wasn't really entitled to apply for patent, but he did so anyway.
Now I must admit is all theoretical. If the US requires something, and if this is not present the patent is unenforcible in the US, then that's what we have to live with.
@Rabid: Good point about the DE employer. I was over-generalizing and missed this.
@Euro-Pat-Att: Your reasoning is very interesting (and I generally agree that the employer owns the lab/data/everything). The crux of your reasoning seems to be based on the fact that the invention is derived from the "body of results" (which are owned by employer) and thus, anything derived from that should also be owned by the same person. Although I can follow your reasoning, I do not agree with your simplification of the inventing process (i.e. I don't think inventing is as simple as "identifying" an invention from amongst a data set).
I don't believe the EU cares much about (or even formally defines) the "inventor."
However, under the US view, the entire correct inventive entity MUST be provided. The "inventor" is specifically defined and further refined by case law. The inventor is the master of the invention (he has "intellectual dominion" over the invention) and one who contributed to the claims. It does not matter where or how the inventor came up with the invention (i.e. by using data or equipment owned by someone else). As long as the inventor contributed to the claims, he is an inventor. Of course, it would be natural to expect some form of compensation to the one who provided the data/equipment in the first place, but that is a (business) consideration that should have occurred BEFORE providing said data/equipment to the inventor (i.e. it could have been contractually resolved before the data/equipment was shared, as is the case in employer-employee agreements). To the best of my knowledge, an "inventor" must be a natural person.
QuoteAnd the identification of an invention in those results is a routine job expected of the employee.
I think you are oversimplifying the invention process, but it doesn't matter. Whether we say the R&D scientists is the inventor or if we say the guy reviewing the data is the inventor (or both of them); the end result is the same. US law still says that the invention vests in the inventor. There are no exceptions that I know of relating to where the equipment/data came from.
QuoteI also wonder about the following: Suppose, following your line of thought, that the employee-inventor is entitled to apply for a US patent and he does. And further suppose the invention turns out to be not novel. It could be said that in that case it wasn't even an invention, and the employee-inventor wasn't really the inventor.
I think this is a false-equivalence; invention and patent are not interchangable. There are plenty of inventions that do not qualify for patent protection. For example, one might invent an apparatus that does something entirely new, but this new apparatus may still not qualify for a patent because of 101 rejections (abstract idea) or 103 rejections (obvious in view of other inventions). The mere fact that an invention is obvious in view of another doesn't mean its not an invention still....but it does mean it is not a patent-eligible invention.
EDIT: [Cut response to make it shorter and more on point]
EDIT2: I believe the US inventor requirement is, at least in part, a side-effect of the US Constitution, which states that, "The Congress shall have power . . . To 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." Thus, under the US Constitution, the Congress only has the power to provide to authors and inventors an exclusive right. This right, being a property right, can then be transferred as desired.
Quote from: EvilLost on 07-18-18 at 05:04 PM
However, under the US view, the entire correct inventive entity MUST be provided. The "inventor" is specifically defined and further refined by case law. The inventor is the master of the invention (he has "intellectual dominion" over the invention) and one who contributed to the claims. It does not matter where or how the inventor came up with the invention (i.e. by using data or equipment owned by someone else). As long as the inventor contributed to the claims, he is an inventor. Of course, it would be natural to expect some form of compensation to the one who provided the data/equipment in the first place, but that is a (business) consideration that should have occurred BEFORE providing said data/equipment to the inventor (i.e. it could have been contractually resolved before the data/equipment was shared, as is the case in employer-employee agreements). To the best of my knowledge, an "inventor" must be a natural person.
That's exactly my point: It usually
is contractually resolved, under foreign national law, as being the legal consequence of the employment contract. If the invention is done by person A in the employment of person B, the (ownership) end result is the same as if B did it all himself (except that A has a right to be mentioned as inventor). Person A knows that he might make a patentable invention if he starts doing R&D work for person B (but then again, he might not) and both parties accept that all results, including a certain probability of a patent application, are transferred to B, in exchange for a nice salary. Usually it is considered in Europe that an R&D persons relatively high salary is compensation for the probabiltÃy that he might make an invention which is not his to exploit, but his employer's (I know some countries, eg Germany, have a further compensation scheme, but that's besides the point).
It's like selling/buying a house, with both buyer and seller knowing that one of the bricks might be very special. Naturally, the price paid for the house will reflect the probability of the brick being special indeed. If it turns out to be special, that's good for the buyer, because the brick was sold as part of the houser, and if not, it's good for the seller, because he got more for the house than he would have gotten otherwise.
Now, we have digressed a bit from the original issue: Can there be an automatic assignment under foreign law of the right to apply for a US patent?
I still argue 'Yes', as part of the whole package of tangible and intangible results transferred to the employer, but I also realise that if the US courts say no (rightly or wrongly), we have no choice.
Euro-Pat-Att may be right with respect to the philosophical question on the 'ownership' of an invention, but the issue here is not the actual ownership, but who has the right to apply for (and obtain) a patent. And there the old distinction between applicant and inventor pops up.
The European Patent Convention (EPC) is quite clear on this in Art. 60: The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed...
So, entitlement to apply for a European patent of an employee inventor depends on the national law.
However, this - of course - only applies to patent applications filed under the EPC. How other patent laws solve the entitlement to obtain a patent should be investigated on a case-by-case basis.
Quote from: bartmans on 07-19-18 at 12:46 PM
The European Patent Convention (EPC) is quite clear on this in Art. 60: The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed...
So, entitlement to apply for a European patent of an employee inventor depends on the national law.
Is there some limited definition of "State" somewhere else in the EPC?
Based on a reading of Art. 60 (by itself), if an inventor lives and works in the US for a US company, then the right to an EU patent would be based on US national law? And US national law would vest it in the inventor.....
However, in practice, our firm does not do this (as instructed by our very large multinational clients)...Am I missing something?
You are right, EvilLost
The EPC is quite careful to make a distinction between 'State' and 'Contracting State'. So yes, entitlement to file is determined in accordance with the law of, for instance, the US.
This is line with my earlier position. From a European perspective the invention is a result of the employment contract under the laws of country X, so it is logical that the laws of country X determine who gets to file a patent.
That's why I argued so fiercely that the reverse should, logically, be the case as well.
You may find the 'Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent' useful.
In your fictive case it appears that based on A6 of this protocol German courts have jurisdiction, but they would have to decide in accordance with US law.
However, the important distinction with US law is (at least if I understood your earlier contributions correctly) that this has no consequence wrt to the enforcibility of the patent against third parties. It is a private matter between the two parties disputing the patent.
Quote from: Euro-Pat-Att on 07-19-18 at 11:37 PM
The EPC is quite careful to make a distinction between 'State' and 'Contracting State'. So yes, entitlement to file is determined in accordance with the law of, for instance, the US.
This is line with my earlier position. From a European perspective the invention is a result of the employment contract under the laws of country X, so it is logical that the laws of country X determine who gets to file a patent.
That's why I argued so fiercely that the reverse should, logically, be the case as well.
This is an explicit requirement of the EPC though. In order for it to apply in the other direction, the US would have to have a similar law (but I don't believe it does).
Also, side note, its a bit confusing when you say the invention is a "result of the employment contract." I assume here you mean an employee-employer relationship, but one withOUT an explicit "assignment clause." Can we all agree that if there is an explicit assignment clause in a valid contract between employee-employer, then there is no contradiction/dispute between the laws at all?
Quote from: Euro-Pat-Att on 07-19-18 at 11:37 PM
You may find the 'Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent' useful.
In your fictive case it appears that based on A6 of this protocol German courts have jurisdiction, but they would have to decide in accordance with US law.
I agree, the German courts would have jurisdiction over the EP patent rights. I think I need to have a serious discussion with some of our clients...
Quote from: Euro-Pat-Att on 07-19-18 at 11:37 PM
However, the important distinction with US law is (at least if I understood your earlier contributions correctly) that this has no consequence wrt to the enforcibility of the patent against third parties. It is a private matter between the two parties disputing the patent.
I'm not sure I follow this last point entirely.
Assuming the patent is valid, then enforcement is effected through a civil suit between the patent owner and the infringer. This is the same in EU, isn't it?
Quote from: EvilLost on 07-20-18 at 02:24 PM
This is an explicit requirement of the EPC though. In order for it to apply in the other direction, the US would have to have a similar law (but I don't believe it does).
Legally you are correct, but logically one would expert that there would be full reciprocity. Apparently not.
QuoteAlso, side note, its a bit confusing when you say the invention is a "result of the employment contract." I assume here you mean an employee-employer relationship, but one withOUT an explicit "assignment clause." Can we all agree that if there is an explicit assignment clause in a valid contract between employee-employer, then there is no contradiction/dispute between the laws at all?
Yes and no. I intentionally phrased this in a vague manner. This is mainly triggered by the following: If I understood an earlier post of you correctly, an 'assignment' not executed according to US legal standard is not an assignment but merely an obligation to assign. From this I understand that an 'assignment' drafted by well intentioned European legal professional is more likely than not, not a true assignment. Please correct me if this is a misunderstanding.
What I am referring to is intentioned automatic assignment by national law (whether valid or not wrt US filings) complemented by customary contract practice which in effect does not produce an assignment according to US standards but only an obligation to asssign.
QuoteI'm not sure I follow this last point entirely.
Assuming the patent is valid, then enforcement is effected through a civil suit between the patent owner and the infringer. This is the same in EU, isn't it?
I understood from your earlier comments, but again please correct me if I am wrong, that in the US a patent can't be enforced by the employer-applicant if a valid assignment can't be produced. Correct?
This is different in Europe. The patent holder can sue for infringement, irrespective of whether he produces a valid assignment. If it turns out there was no automatic assignment, contrary to what the employer-applicant believed, this is purely a matter between the inventor and the (allegedly illegitimate) applicant that could lead to the patent being partly or fully owned by the inventor.
THis means that the risk to your clients is very limited: only the entitled applicant (the inventor) can stop them enforcing the patent against third parties. As long as the inventor stays quiet/doesn't realise he has rights, there's no problem for your clients.
I think we are getting a bit offtopic here. I was discussing the case where there is NO contractual agreement with respect to an assignment (or obligation to assign). For example, an employer-employee relationship is recognized, but no written contract exists.
Under US law, 37 CFR 1.46 states:
QuoteA person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
37 CFR 3.73(a) states:
Quote(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.
Thus, although the original applicant is presumed to be the owner, only the inventors or those the inventor has assigned/obligated to are valid applicants. Note that these laws do not make any mention of where the invention, inventor, or applicant are located.
SCENARIO:
Now, lets assume a German inventor, German employer, in Germany. No written employment contract exists, but a clear employee-employer relatinship does exist.
Lets further state that, under German national law, "all" the rights automatically transfer to the employer.
Is the German employer an appropriate applicant under US law? I think the answer is no.
The inventor has not assigned his rights to the employer. [At best, one could argue that German national law assigned the inventors interest, but the inventor himself did not do so.]
The inventor is not under any obligation to assign his rights to the employer.
One can argue that the employer has "sufficient proprietary rights" (due to the German law transfer) to make an application, but this clause requires the application to be made "on behalf of the inventor"....but if the employer is filing on behalf of himself, this is not on behalf of the inventor.
Thus, even if we say that the employer already has the rights in the patent, the employer is still not an appropriate applicant under 37 CFR 1.46.
I believe this is what @bartmans was referring to in his earlier comment. We must look to the national law of each place in order to determine the requirements for an appropriate applicant in that jurisdiction.
Notwithstanding the above, it is my position that regardless of "how" German law effects the transfer, such a law (and thus transfer) would not be binding on the US national patent rights because a German law has no power in the US (absent a multinational treaty or other agreement, which I do not see here).
In the case where there IS a contract with an assignment clause (either assign or obligation to), that contract itself may be legally enforceable in multiple jurisdictions at once. That is, the contract may be valid in country X under the national contract laws of country X and simultaneously be valid in country Y under the national contract laws of country Y. In this scenario, it is possible to fix the chain of ownership (ie by using a courts power to force the obligation to assign into an actual assignment). This scenario where an assignment clause exists does not pose any problems in the US. [We could discuss the intricacies of a valid assignment/contract ad nauseum, but I don't think that is relevant to influences of a German national law on US patent rights.]
Well, I think we keep repeating positions here...
presence or not of a written employment contract would be irrelevant. If both parties act as if there is an employer-employee relationship, according to my understanding a contract is assumed, even if not written out.
If all rights transfer according to German law, that is equivalent to stating that fact explicity in the contract (written or not). So for all intents and purposes, the fact that the law specifies a transfer, means there is a transfer agreed between the parties. There's no need to specify in a contract a legal default position.
You argue that it's not the inventor that assigned his rights, but German national law. I disagree. The inventor did it himself by agreeing to an unwritten employement situation, accepting the legal consequences of it, just like the employer did. In your scenario the employer did not agree that a salary will be paid. And yet it needs to be paid based on the applicable law. Similar for the 'rights to the invention', going in the other direction.
The words in US patent law are what they are, and you have a point. But I don't think these words were ever intended to have an interfering effect in a foreign civil dispute.
Quote from: Euro-Pat-Att on 07-23-18 at 06:13 PM
presence or not of a written employment contract would be irrelevant. If both parties act as if there is an employer-employee relationship, according to my understanding a contract is assumed, even if not written out.
An implied contract would most likely exist, but what clauses would it include? And what jurisdictions would imply its existence?
An actual contract may be independently enforceable in an infinite number of jurisdictions (pending its validity based on each jurisdictions laws, absent a choice of law provision). So, if A and B contract with each other to do something, this contract could be enforced in country X under country X's national contract law; it could be enforced in country Y under country Y's national contract law, etc.
An implied contract is a creature of the law/courts. A ruling from one court is only binding on other courts within its jurisdiction. For example, a district court ruling may bind other district courts but it does NOT bind the supreme court. A Supreme Court ruling DOES bind all lower courts within its jurisdiction, but has no bearing on any court, lower or not, in other jurisdictions. Similarly, a court decision in one nation does not bind courts in other nations to its holding. If it did, we would have a unified global legal system (which we most certainly do not have!).
If a US court found an implied contract between the parties (containing clauses A, B, and C), this does not mean a German court must enforce that ruling. The German court may independently find that an implied contract exists (including clauses A, B, and D). I know of nothing that requires the German court to find the same clauses (A, B, and C) as found in the US implied contract ruling. This is because a US court has no power over a German court, and also because, based on differing national contract laws, the two courts may end up with differing interpretations based on an identical fact pattern (compare this to the example of a Supreme Court ruling which does bind all lower courts in the same jurisdiction).
Perhaps a litigator on this board can provide more clarity.
NOTE: It is possible to enforce a foreign (German) judgment in the US. Could one obtain a judgment in Germany (wrt "all" rights being transferred, including US rights), then bring this judgment in front of a US court for enforcment purposes only? Presumably yes, but I don't believe such a judgment can be validly obtained. I would immediately wonder how a German court can rule on US patent rights when the German court has no in rem jurisdiction over US patent rights? My German sucks, and I am not a German attorney-at-law, so I am not able to look up any more pertinent information on this point.
Quote
If all rights transfer according to German law, that is equivalent to stating that fact explicity in the contract (written or not). So for all intents and purposes, the fact that the law specifies a transfer, means there is a transfer agreed between the parties. There's no need to specify in a contract a legal default position.
IF all rights transfer according to German law...
In order for this to be true, it is necessary for the US court to imply the existence of a contract
using German national law.
But, absent an actual contract with a choice of law provision stating German law is chosen, WHY would the US court apply German law? (NOTE: This is not a question of applying contract law or any specific law; it is a much broader question of when would a US court apply a foreign law in a domestic ruling).
Unfortunately, I cannot answer this question sufficiently myself. I'm sure some scenarios exists where a foreign law would be implicated, but I am not able to come up with an example because every scenario I think of has other issues (ie the US court is not a proper venue and would never hear the case to begin with). In this sense, patents are somewhat unique.
QuoteBut I don't think these words were ever intended to have an interfering effect in a foreign civil dispute.
Not entirely sure what you mean by a "foreign" civil dispute. If the dispute is over US patent rights, this fight would occur in a US court which would make it a domestic dispute. US patent law does not say anything about how any foreign patent rights are treated, so in this respect, it does not have any interfering effect. Perhaps I misunderstand this last sentence.
Quote
Not entirely sure what you mean by a "foreign" civil dispute. If the dispute is over US patent rights, this fight would occur in a US court which would make it a domestic dispute. US patent law does not say anything about how any foreign patent rights are treated, so in this respect, it does not have any interfering effect. Perhaps I misunderstand this last sentence.
I figured you would answer like this :)
The core of the matter, I suppose, a difference in convictions.
For me it is a fundamental belief that the right to apply for any patent, resulting from work done by A for B, is a private matter between A and B, controlled by the agreement they made, complemented, or replaced even, by the laws of the country where the work was performed, and that no other country should have any say in this. I fail to see how it could be otherwise. The right to apply for a US patent is a brick in the house that A built for B, and the entire house, was transfered under national law.
Another way of explaining this would be that a right to apply for a US patent exist as soon as the invention is made, even in the extreme case that the US would not have patent legislation. The right to apply for a US patent is not
created by US patent law, only assigned by US patent law in the absence of another arrrangement. Well, that's my view anyway of what is fair to all concerned.
In your view, if there was no US patent law for a day, could A assign to B on that day 'the right to apply for a US patent as soon as the US has patent legislation again' ? If yes, isn't that proof that patent law is only of secondary relevance for assigning patent application rights?
Let me pose another question: if the employee-inventor (in eg Germany) goes bankrupt, is the 'right to apply for a US patent' something the liquidator in Germany can sell? If you say yes, isn't that proof that foreign legislation can easily supersede US patent law?
I honestly don't understand why, in your view, A can contractually assign the right to apply to B, but why this contract can not be replaced by or complemented by foreign legal provisions that govern the contract and that are freely accepted by A and B? Where's the fundamental difference?