Multi inventors innovation Flashcards
(7 cards)
who owns the patent? rights of employee and employer (6)
- employee inventors
- self employed inventors
- other employees
- employees of universities and research centres
- garage inventors
- employees who quit
employee inventors, paid and required to invent, so the employer own the right to the patent and the employee the “moral right” to be recognized as the inventor
self emlpoyed own the patent OR TRADE SECRET, unless contractually specified that they were required to invent (in this case the employer owns the patent)
other employees: the employer holds the right to the patent but employees have the RIGHT OF FAIR COMPENSATION (employer must prove that the essential part of the inventive activity has taken part during the working hours (chronological connection) and in the employee’s field of activity (direct causality). And compensation depends on
1) importance of invention to the company
2) employee’s tasks
3) contribution from the company to te invention
employees of unis and research centres: a special case of employee inventors, the employer holds the right to exploit the invention BUT professors and researcher can file if the institution fails to act WITHIN 6 MONTHS
garage inventor: a special case because outside of working hours but within the employer’s scope of activity: employer has RIGHT OF PRE-EMPTION within 3 month of patent filing notification TO USE OR PURCHASE the patent, EMPLOYEE has RIGHT OF COMPENSATION WITH LEASE OR FAIR PRICE
employee who quits: in italy, considered developed within the company up to one year from termination, but IS ONLY A PRESUMTPION, the employee can prove it was not developed within the company/by the company. If the company can prove it was developed by the company it can also act after more than one year
the special case of multi inventors?
co-inventorship: a “creative collaboration” between multiple financially independent parties
the rights are to be exercised under a SHARED REGIME: usually regulated by a contract. if not, national laws apply
can a single co-inventor license the patent?
No, the consent of others is needed UNLESS OTHERWISE CONTRACTUALLY AGREED
in the US, even if not agreed, each co-inventor can license ITS OWN PART or THE WHOLE
how to determine ownership percentages?
contractually or in court
can a single co-inventor sue (enforce the patent)?
UNLESS SCPECIFIED IN THE CONTRACT, you need JOINT ACTION
exception: US, a single could (just like the others can undermine the action by individually conferring a license)
is AI inventor?
no, generally framed as a human being
AI IS A TOOL
NO PATENT PROTECTION FOR AI INVENTIONS
NOT EVEN A CO INVENTOR
Australia the exception (south africa accepted DABUS patent application but then turned it down)
What restrictions does a co-inventor have if they move to a
competing company?
what it can and can’t do
it can:
use NON CONFIDENTIAL information + SKILLS honestly acquired
work on what does NOT COVER former CONTRIBUTION, UNLESS OTHERWISE CONTRACTUALLY AGREED
can’t:
work on his same former contribution, even a derivative product would violate the patent
Use what is protected under TRADE SECRET
