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Author Topic: Q: European Patent Attorneys - where invention does not first vest in inventor?  (Read 396 times)

Tobmapsatonmi

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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.
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bartmans

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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.
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Tobmapsatonmi

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Thanks Bart for your helpful answer.
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Euro-Pat-Att

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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.


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