Q: European Patent Attorneys - where invention does not first vest in inventor?

[Euro-Pat-Att]

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 probabiltíy 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.

[bartmans]

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.

[EvilLost]

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?

[Euro-Pat-Att]

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.

[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.

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?

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...

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?

[Euro-Pat-Att]

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.

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?

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.

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?

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.

[EvilLost]

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:

A 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:

(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.]

[Euro-Pat-Att]

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.

[EvilLost]

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.

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.

But 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.

[Euro-Pat-Att]

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?