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les Nouvelles - June 2017


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  • les Nouvelles - June 2017 - Full Issue
    PDF, 3.62 MB
  • Three Years After The America Invents Act: Practical Effects On University Tech Transfer
    By Robert MacWright
    The America Invents Act (AIA) has significantly changed the way university technology transfer offices operate. On the plus side, the first-inventor-to-file rule has allowed for simpler invention disclosures, since disclosures no longer have value as conception records. The AIA has also provided more relaxed procedural rules, avoiding the mad dash to get inventor signatures, and allowing universities to file in their own name from the outset. On the negative side, technology transfer offices have to make filing decisions faster, as the first-inventor-to-file rule makes it risky to wait for more data; another inventor could get to the Patent and Trademark Office (PTO) first, and there is no longer a one-year grace period for prior art. The AIA also created quasi-judicial proceedings known as Post-Grant Review (PGR) and Inter-Partes Review (IPR), in which claims are interpreted more broadly, and can be invalidated with less proof than if those same claims were reviewed by a federal court. Based on the rate that IPR proceedings are invalidating patents and patent claims, the AIA may make it more challenging and expensive for universities and their licensees to defend those patents that are most likely to succeed in bringing new products and services to the public.
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  • Importance Of IP And Innovation For The Development Of Emerging Nations: Lessons Learned From Silicon Valley And Other Regions
    By Rashid Khan, Lawrence J. Udell, Tanja Sovic-Gasser, Denis Croze, Audrey Yap, Elizabeth Chien-Hale, Hector E. Chagoya-Cortes, Mark Horsburgh, Johannes Homa, Suraiya Chowdhury
    The objective of this paper is to present various regional “ecosystem” models that enable intellectual property (IP) based entrepreneurship and business creation for economic transformation of a region or the nation. By better understanding successful regional models, one can recommend appropriate strategies and models, enabled by IP and innovation, for rapid development of the emerging nations. Various contributions are presented in this paper based on the presentations made in Beijing at the LESI Annual Meeting, May 2016 during a workshop on the subject matter. A number of representatives, from various parts of the world that have thriving entrepreneurial ecosystems, provided different perspectives on the topic at the event. Despite the differences in many regions, models and perspectives, we managed to identify underlying common themes that can be leveraged by the emerging nations. These common elements are the foundation of this paper.
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  • A New Strategic Approach To Technology Transfer
    By Mojdeh Bahar and Robert J. Griesbach
    The principal goal of federal research and development (R&D) is to solve problems for public benefit. Technology transfer (TT) within the U.S. Department of Agriculture (USDA) has always been a core part of its mission, but has usually been addressed after a research project is completed. As a result, TT may either not reach desired impact, or arrive at the scene when the technology is commercially non-viable or scientifically obsolete. In order to better help USDA scientists, we have adopted a new paradigm. In this new paradigm, TT is not an afterthought, but an essential and integrated part of the research process beginning when the research objectives are first conceived. By aligning TT with research objectives, the impact of research outcomes will be strengthened.
    PDF, 111.54 KB
  • Employee Inventions Around The World
    By Sun R. Kim
    Multinational companies have relied on their employees for research and development projects and for creating valuable IP portfolios. The ownership of employee invention and related remuneration issues have been discussed at an international level. The issue of employee remuneration is not only important for innovative companies but also for employee inventors. Seeking clarity on all aspects of employee invention is critical for international companies conducting cross-border research. Since the laws relating to the ownership of employee invention and remuneration vary significantly from country to country, uncertainty becomes problematic.
    PDF, 41.38 KB
  • Employee Inventions In France
    By Francis Declercq and Didier Intes
    • In France, and by virtue of the French Intellectual Property Code, employees’ inventions are in most cases the property of the employer; • In return, employee inventors must be paid financial compensation by the employer; • In order to prevent legal disputes with employee inventors, it is important that the employer implements within the company an inventors compensation program.
    PDF, 112.04 KB
  • An Employer’s Entitlement To An Employee’s Invention In Australia
    By Rodney DeBoos
    In Australia, the entitlement of an employer to a patentable invention made by its employee is governed by the common law and equity. There is no statute which dictates the rules which apply, although the impact of the Corporations Act 2001 is discussed below in relation to fiduciary duties. The situation in relation to patents can be contrasted with the situation regarding copyright where the Copyright Act 1968 provides a set of default rules regarding ownership of works and subject matter other than works.
    PDF, 95.51 KB
  • Service Invention In China— Current Provisions & Proposed Changes
    By Stephen Yang
    Ownership of Service Inventions Current Provisions - Article 6 of the current Chinese patent law defines “service invention-creation” and the ownership thereof.
    PDF, 77.82 KB
  • Managing Risks And Rewards For Employees Inventions And Intellectual Works In Mexico
    By Hector E. Chagoya-Cortés
    The Mexican patent system has had for several years the necessary legal framework in order to give certainty to employers regarding ownership of inventions made by its employees, but current trends related to multinational open innovation and the public policy promoted in Mexico for conforming technology transfer offices at R&D centers have made it necessary to study the obligations and risks arising out of poor management of employees’ inventions. This article intends to provide an overview of the critical aspects of such management.
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  • Employee-Inventors Compensation In Germany— Burden Or Incentive?
    By Sebastian Wündisch
    Introduction In Germany, around 80 to 90 percent of all inventions are created by employees.1 This leads to a conflict between the German principles of employment law and patent law. According to employment-law principles, the results of work are the property of the employer; the salary compensates the employee for all assigned rights and benefits.2 Under German patent law, however, the right to an invention arises first of all in the natural person of the employee (inventor principle). To settle this tension, the German Act on Employees’ Inventions created a comprehensive set of rules back in 1957. Under the Act, the employer can acquire the rights to employee inventions on a case by case basis only; in return, the employee is mandatorily entitled to reasonable compensation for each single invention achieved.
    PDF, 144.53 KB
  • New Employee Invention Scheme In Japan
    By Shoichi Okuyama
    The employee invention scheme in Japan, which was initially modeled after the German system, was again revised in 2015, and the new scheme took effect on April 1, 2016. I would first like to summarize the changes made, and then put these changes into the perspective of events since the Patent Act came into effect some 50 years ago.
    PDF, 77.58 KB
  • Employee Inventions In The United Kingdom
    By Jennifer Pierce
    Historically, the United Kingdom has been a jurisdiction where, in relative terms, the law is more favourable to employers than to employees. This is certainly the case in comparison with some mainland European jurisdictions. In respect of ownership of employee inventions, the law is well established, but the law relating to employee compensation was amended in 2004 and the new legislation is effective for inventions applied for on or after 1 January 2005. The seminal cases on employee compensation all apply to the old legislation, which was seen as being too harsh towards employees as it was extremely difficult for an employee to claim compensation successfully. We have yet to see the results of the change in legislation in important cases.
    PDF, 86.42 KB
  • Employee Inventions In The Netherlands
    By Wouter Pors
    In The Netherlands, the rights of employees to an invention are governed by the Dutch Patent Act of 1995 (DPA), whereas otherwise the rights and obligations of employees are governed by the Dutch Civil Code. Only two provisions of the Patent Act, articles 12 and 14, specifically deal with the rights of employees.
    PDF, 102.71 KB
  • The Scoop from Europe: Europe Takes On FRAND Licensing—Again
    By Patricia Cappuyns and Jozefien Vanherpe
    Almost two years ago, on 16 July 2015, Europe’s highest court, the European Court of Justice (CJEU), handed down its much anticipated judgment in the widely publicized Huawei/ZTE saga regarding standards-essential patents (SEPs).1 The question put before the Court was in what circumstances a SEP owner may seek injunctive relief against an alleged patent infringer without violating EU competition law. Instead of painting a crystal-clear picture, the CJEU’s decision left a number of questions unanswered. This resulted in differing national court interpretations. We discuss two long-running FRAND disputes in more detail and focus especially on the recent UK High Court Decision in the Unwired Planet/Huawei case. Furthermore, on 10 April 2017, the European Commission released a roadmap in which it disclosed its aim of establishing a predictable and proportionate framework for FRAND licensing of SEPs.
    PDF, 115.21 KB
  • Recent U.S. Court Decisions And Developments Affecting Licensing
    By John Paul and D. Brian Kacedon
    Subsidiary Has Standing to Join Lawsuit as Implied Exclusive Licensee, But Parent Cannot Recover Lost Profits of Subsidiary from Patent InfringerIn Mars, Inc. et al. v. TruRX LLC et al., even in the absence of a written patent license agreement, a parent company successfully showed that its subsidiary had an implied exclusive license and therefore had standing to join the parent company as a co-plaintiff in a patent infringement case. According to the decision by a magistrate judge, if a subsidiary company has the right to practice the invention and an express or implied promise that all others will be excluded from practicing the invention, it has standing as a co-plaintiff. The magistrate judge also held, however, that the parent company could not recover the subsidiary’s lost profits from the infringer.
    PDF, 193.24 KB