這就是在Edwards Lifesciences AG v Cook Biotech Inc.這件英國案例中所發生的故事，該公司係以自己的公司名稱在英國申請了一件後續的專利申請案，然而在美國的對應專利案之申請人中，卻仍包含了發明人員工的名字。不幸的是，當公司將該專利權從該等員工轉讓給公司時，已經晚於可主張優先權之一年期間以後，所以其便無法被視為是可以轉讓優先權主張權利之程序。該件英國專利因此就無法享用到優先權，只因為並不是所有之原來的共同專利申請人，都存在於英國的專利申請案中。
與專利共同申請人有關的問題，同樣也有可能發生在例如美國之其他司法管轄區域中。Ethicon v USSC 是一件可以用來說明正確地轉讓共同申請人的重要性之著名案例。在這個案例中，系爭專利只有列名一位發明人 -- Dr. Yoon，其將獲准專利之技術獨家授權給Ethicon。在Ethicon對抗USSC的侵權訴訟中，USSC發現該系爭專利還有一位未被列名之發明人 -- Young Jae Choi。為了要對抗該專利權，USSC成功的把Young Jae Choi也列名為該系爭專利的發明人，然後從他身上取得一個可溯及既往的授權許可。這件事不僅造成Ethicon對抗 USSC的訴訟案敗訴，也弱化了Ethicon被獨家授權使用該專利之權利。
Possible complications on patent co-ownerships Stefano John NAIP Education & Training Group / European Patent Attorney
Co-ownership of granted patents (co-patentee) and patent applications (co-applicants) used to be rare, but is becoming more popular as the benefits of collaborative research leads to sharing patent rights. As patents are monopoly legal rights that allow a patent owner from preventing all others from putting into effect what is claimed as the patented invention and as they are also rights which can be treated as property under some circumstances, the concept that this monopoly right can be shared by more than one legal person can create many legal issues.
Most of these legal issues arise once the patent has been granted, but some can simply arise even between co-applicants. For example, to enjoy priority rights from another patent application through the Paris Convention in some jurisdictions, all co-applicants in the priority application must be present as co-applicants in the subsequent patent application. This of course can create confusion in the situation where the priority application was a US patent application naming the employee-inventors as original applicants, as is US practice. Without a proper assignment or transfer of these rights to an employer, the employer would not be able to file a corresponding patent application in Europe under their own name and enjoy priority of the relevant US application because it would still be in the employee-inventor’s name and not the employer’s.
This is what happened in Edwards Lifesciences AG v Cook Biotech Inc in the UK, where the employer had filed a subsequent UK application in its name only while the US application also included the employee inventors. Unfortunately for the employer, the assignment from employees to employer was dated after the priority year and therefore not considered a valid assignment for the priority rights. Thus, the UK patent did not enjoy priority because not all co-applicants were present in the UK patent that were in the original patent application.
Problems regarding co-applicants can also occur in other jurisdictions, like the USA. A famous case that illustrates the importance of assigning co-applicant rights correctly is Ethicon v USSC. In that case a patent was obtained with only one listed inventor, Dr. Yoon, who granted Ethicon an exclusive license in the patented technology. During infringement proceeding by Ethicon against USSC, USSC discovered that there was a second, unlisted inventor : Young Jae Choi. To defeat the patent right, USSC successfully listed Mr. Choi as an inventor on the patent, and then obtained a retroactive license from him. Not only did this cause Ethicon’s case against USSC to fail, but it also diluted its licensed right to exclusive use of the patent.
Issues between co-patentees, as opposed to co-applicants can be even more complicated because many more factors are involved. These factors vary from how the relevant National Law treats the patent right (more like a property right or more like a legal right) to how the parties have behaved to obtain grant of the patents and their relevant intentions (under doctrine of equitable conduct).
Other type of legal issues for co-patentees can arise from the obligation to maintain the patent right in force or simply from the ability to put into effect the invention claimed. In France, Switzerland and Finland, the relevant patent Law indicates this is not possible without proper indemnification of the other co-owners (thus in practice one is buying their assent).
There is no harmonised European approach on this aspect of patent Law and it is left to national Laws to determine how to determine the patent rights. The European Patent Convention is silent on what can be done by co-applicants, except that they can exist and the relevant issues to entitlement should be decided at a national level and recognized by the EPO through a Protocol on Recognition (annex to the EPC).
All of these issues are too complicated to be summarised in this article, but there are two general rules that should help in avoiding most of the legal issues that can arise from being co-applicant or co-patentee, irrelevant of the jurisdiction. The first rule is to correctly identify all the applicants who have a right to be named as inventors/applicants in the original priority setting patent application. Such rights can then be transferred or assigned, and if done properly, should not cause further problems. Otherwise one risks obtaining an invalid patent. The second rule is that agreements between co-applicants or co-patentees on how to manage the patent rights will generally trump the relevant Law of the country on how co-applicants or co-patentees should behave. However relevant legal experience shows that many of these contracts are not exhaustive and this lead to the default position of relying on the court’s interpretation of relevant patent Law on co-ownership. Therefore it pays for all parties to be as clear and exhaustive at the start of any collaborative process on how to manage the patent rights to avoid expensive litigation proceedings later.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
