Workshop V Multinational Inventions- How to Reconcile IP Issues

Workshop V
Multinational Inventions- How to
Reconcile IP Issues
Moderated by Lawrence T. Welch
Eli Lilly and Company
The Problem
• “Business is global, but laws are local.”*
• Research now spans the globe, and researchers are collaborating on
projects often resulting in inventions with inventors from more than
one country
Laws in US, Europe, Japan, China, India, etc. vary on key points
• Security clearances/ requirement for filing first in the country where
the invention is made
• Inventor remuneration
• Definition and application of rules of inventorship
Luncheon Address of James Pooley, WIPO at the Intellectual Property Owners Annual Meeting,
Los Angeles, Sept 12, 2011
Lawrence T. Welch
June 2010
Variability on key elements*
Security clearance provisions in some countries
• US
• China
• India
• Korea
• Certain European countries (e.g., UK, Spain, Germany)
No security provisions in other countries, e.g.,
• Japan
• Canada
• Australia
• Mexico
• Certain European countries (Austria, Czech Republic, Slovak Republic, Cyprus,
• Taiwan
Consequences of failure to
comply vary by country as well…
• Loss of patent rights
• Criminal sanctions
• Excuses for inadvertent errors?
Foreign filing licenses instead of
• Available in US
• But, applying for a license in another country first could
violate US law
• Available in China, but could take several months
• Applying for a license in another country first apparently
does not violate the law
• Not available in some countries, e.g., Spain, Russia
Variability on inventor’s
• Inventor’s remuneration not required, in, e.g.,
• US
• India
• Inventor’s remuneration can be required in, e.g,
• Japan
• China
• Europe (e.g., e.g. Austria, Bulgaria, Denmark, France,
Germany, Greece, Hungary, Italy, the Netherlands, Norway,
Portugal, Spain, Sweden and the United Kingdom)*
• Korea
• Nature and amount of compensation vary greatly by country
Issues include
• What happens if there is a joint invention involving US
and Chinese inventors
• Filing first in US would violate Chinese law
• Filing first in China would violate US law
• Request for foreign filing license in China could violate US
• Request for foreign filing in US followed by actual filing in
China may satisfy both country’s laws
• How do you apportion inventor remuneration?
• How do you reconcile differing notions of inventorship?
 Qing Ge (Liu Shen, China)
 Volkmar Henke (Eisenführ, Speiser & Partner, Germany)
 K. Vivek Reddy (VIVEK REDDY LAW CHAMBERS, India)
 Jeff Ranck (Microsoft, India)