INTELLECTUAL PROPERTY ISSUES IN MULTINATIONAL COLLABORATIVE RESEARCH

RESULTING FROM OUTSOURCING

K.Vivek Reddy

USPTO 1976 -2004 – Over 1000 Indian Inventors. 80% are with US Inventors.

Significant Growth in Research Labs in IT

and Pharmaceutical Industry

Collaborative Ventures are going beyond task-driven Outsourcing.

Identification of Inventors

Ownership of Invention

Foreign Filing

Inventor Remuneration

INDIA “True and First Inventor” – “All persons who actually laboured and part of the process”

US 1973 – Reading Industries – Parameters of Joint Inventorship – “one of the Muddiest concepts in the muddy metaphysics of patent law”

Patent Act U.S.C 116– Obligation to apply for a patent jointly if invention made by two or more people

Does not require a.Physical proximityb.Equal Contributionc.Exhaustiveness – Need not cover every claim of the patent.

Joint Invention – a. Joint manner of contributing ANDb. Inventive Nature of Contribution

Stage: Conception or Reduction to practice

Slicing and Dicing of Inventive Process

1. Material Contribution to the Ultimate Invention

2. Solving problem not recognized by the Initial Inventors

3. Solves a problem that initial inventors could not solve

1. Produced an advantage not contemplated by initial inventors

I. Communication among Inventors. Enhancing Innovation through Considerartion of IdeasQuantum of Collaboration Upaid Dispute

II. Significant Contribution to Conception

III.Intend that inventions be merged. Interplay between the Conception and the Collaboration

IV. Conflicting Incentives of Employer and InventorRecognition v. Avoiding Rejection of Inventions – Prior Art and Double Patenting

Employer and Employee – No Automatic OwnershipCommon Law Position. Sterling Case.

Unlike copyright, Patents developed in the course of employment do not belong to the employer. Contractual Protection.

a. Assignment of Invention

b. Assignment of the Right to Apply for Patent

Assignment after invention. Validity of Assignment even before the Invention.

Failure to execute the Assignment after invention.

Remedies

Section 39 prohibits any person resident in India from filing a patent application outside India for any invention without the prior written permission of the Controller of patents.

Prohibition Direct and Indirect – “Make or Cause to be made

Indian Filing Atleast 6 Weeks Before before the application outside India is made

Prohibition will not apply if the license has been filed by a person resident outside India with respect to the same invention.

Resident of Applicant v. Place of Invention

No Exception for Joint Applicants

Law Commission – Outer Deadline of weeks months for considertation of application

Specified Inventions – Defence– Controller will have to take prior consent of Government

Failure to Comply – Abandonment of Patent Applicaton or Revocation of Patent

Decision of Controller is Final, but is subject to judicial review.

Secrecy Directions by Government Specified

Categories of Inventions

Captive v. Independent Non-exclusive Development

Contract ownership, assignment, filing, and prosecution

Past IP required for execution of Project.

Created IP

Termination

Assignment and Prosecution Obligations post Termination.

Absence of Statutory Framework Contractual Negotiation. Terms of Negotiation may include payment◦Upon invention◦Upon Assignment◦Percentage of Royalties