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
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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,
Switzerland)
• Taiwan
3
Consequences of failure to
comply vary by country as well…
• Loss of patent rights
• Criminal sanctions
• Excuses for inadvertent errors?
4
Foreign filing licenses instead of
filing
• 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
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Variability on inventor’s
remuneration
• 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
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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
law
• 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?
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Panelists
 Qing Ge (Liu Shen, China)
 Volkmar Henke (Eisenführ, Speiser & Partner, Germany)
 K. Vivek Reddy (VIVEK REDDY LAW CHAMBERS, India)
 Jeff Ranck (Microsoft, India)
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