Patent Related Issues to Consider in International Agreements. John D. Conway

Transcription

1 Patent Related Issues to Consider in International Agreements John D. Conway September 2012

2 Agenda Inventorship standards Academia: Who is the agreement with? Inventor remuneration requirements Inventor reversionary rights Control of patent litigation Control of filing for Patent Term Extension (PTE) or Supplemental Protection Certificate (SPC) Conflicts between countries first to file requirements

3 Inventorship Standards U.S. has most well defined and stringent inventorship requirement Most countries standard for inventorship is less stringent or not as well defined as the U.S. standard Germany: Managers are often added as inventors Potential negative impact: Failure to address issue could result in serious complications in the U.S. Agreement should include a term that addresses inventorship determination Ideally, U.S. law should be the standard

4 Academia: Who is the Agreement With? A Gotcha to look out for Ask Does the University have all the rights to be the party that signs the agreement? Professor German public university professors retain certain rights depending on their seniority and rank Post-doc Graduate Student Developing countries academic institutions sometimes have not thought through this issue

5 Inventor Remuneration Requirement Some countries laws require remuneration to inventors In some countries, employment contracts cannot void this right The amount of remuneration can be quite high if a contract does not dictate otherwise Germany: complicated formula that determines the amount of remuneration to each co-inventor Royalty collected on patents could have to be shared with German inventors

6 Inventor Remuneration Requirement China: minimum amount set by law 3000 Yuan for each granted patent No less than 2% of profits from sale of product covered by patent No less than 10% of royalties collected from licenses under patent Different (higher or lower but not zero) terms can be agreed to in employment contract Agreement should require parties to secure mutually agreeable terms with employee/inventors and take cost into consideration in agreement s financial terms

7 Inventor Reversionary Rights Some countries (e.g., Germany) require that an assignee, who has obtained the rights to a patent from an employee, who wants to abandon the patent must offer the patent rights back to the inventor(s) and give the inventor(s) an opportunity to take ownership and responsibility of the patent Potential negative impact: assignee infringes a patent that it once owned Agreement should note that parties have a license to any patents regardless of ownership

8 Control of Patent Litigation Standing requirement to file patent infringement suits Assignee is often required to file the suit or be a party to the suit Co-owners can file suit independently or all co-owners are required as named parties in suit Need to act fast in applying for a PI could be hampered Terms in agreement regarding assignment of patents should take control of litigation into account Don t necessarily need to have same assignee for all counterpart patents Term dictating actions of patent owner in patent enforcement actions

9 Control of PTE/SPC Filing U.S. requires patent owner and marketing authorization owner (if different) to apply for PTE One PTE per product U.S.: If both parties own patents that could be extended, who decides which one to extend? What s the impact on royalty period?

10 Control of PTE/SPC Filing E.U. doesn t require patent owner to be marketing authorization owner to apply for SPC Multiple SPCs (each to different entity) possible on single drug Multiple SPCs in E.U. may mean longer period of royalty payments than the payor may have considered Balance paying royalties for longer period with strength of patent and extended exclusivity Agreement should fix PTE/SPC control and strategy

11 First to File Requirement Some countries require that inventions invented/made in that country be first filed in that country or a foreign filing license is required prior to first filing the application in a foreign country U.S., U.K., China, France, Germany, etc. China did not offer a foreign filing option in its previous version of its patent law Agreement should mention as a reminder? In rush to file, this is often forgotten

12 Questions? Other Isues? Thank you!