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JOURNAL OF THE LICENSING EXECUTIVES SOCIETY INTERNATIONAL

les Nouvellesles NouvellesVolume XLVII No. 4 December 2012


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Advancing the Business of Intellectual Property Globally

Joint Ownership of Intellectual Property Around the World

Introduction To Joint OwnershipSun R. Kim AnD VeRA Lipton — Page 250

Joint Ownership In Australia RoDney De BooS AnD timothy CReeK — Page 252

Joint Ownership Of Intellectual Property Rights In AustriaSABine FehRingeR AnD thomAS L. BeReuteR — Page 256

Joint Intellectual Property Ownership: A Brazilian PerspectiveJuLiAnA L. B. ViegAS — Page 260

Questions Of Entitlement In Chile, The Interplay Of Joint Ownership And Public Funding Of R&D In Chile

JuAn FRAnCiSCo ReyeS — Page 265

Joint Ownership Of IP In The Czech RepublicVoJtĚCh ChLoupeK — Page 268

Joint Intellectual Property Ownership In GermanypeteR K. heSS AnD miChAeL KoBLeR — Page 271

Some Insights Into Joint Intellectual Property (IP) Ownership In IndiaSuDhiR RAVinDRAn AnD SuBRAmAniAm VuthA — Page 274

Joint Ownership Rights In Israel neiL WiLKoF AnD ADAR oRtAL — Page 277

Joint Ownership Of Patents, Copyrights And Trademarks In MalaysiaBoo Seng ong — Page 281

Practical Reflections On The Co-Ownership Of Industrial And Intellectual Property Rights In Spain

mAnueL De toRReS nAVARRete — Page 284

Joint Ownership Of Intellectual Property Rights In TurkeyomeR hiziRogLu AnD yuCeL hAmzAogLu — Page 287

Joint Ownership Of IP In The UK—Joined Up Thinking Or Just A Little Disjointed? FionA niCoLSon AnD CAtheRine teRRy — Page 290

Joint Ownership Of United States Patents, Trademarks And CopyrightsD. pAtRiCK o’ReiLLey, JuLiA Anne mAtheSon AnD mARgARet A. eSquenet — Page 294

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December 2012 250

Joint Ownership

Joint Ownership Of IP Around The WorldBy Sun Kim, Chair and Vera Lipton, Vice Chair IUGT Committee

Introduction

Welcome to this special issue of les Nouvelles dedicated to joint intellectual property (IP) ownership. This edition specifically explores

the legal issues arising in joint IP ownership and the default rights of IP owners in 13 countries: Austria, Australia, Brazil, Chile, Czech Republic, Germany, India, Israel, Malaysia, Spain, Turkey, United Kingdom and United States.

The articles published in this issue have been col-lected during the past year as part of activities of the LESI Industry-University-Government Transactions (IUGT) Committee and les Nouvelles Editorial Board. In particular we would like to acknowledge the work of Sun Kim from LES South Korea, who initiated this project and Larry Plonsker, the editor of les Nouvelles. We are also thankful for the strong support received from national societies, contributing authors of the countries listed above, as well as from Benelux, Italy, New Zealand, South Africa and many others. Why Joint IP Ownership?

Collaborations and the creation of outputs through networks and partnerships have become critical to fostering innovation in recent years. Industry part-ners, universities, public research organisations, gov-ernments and philanthropic funders have all moved to embrace the idea that collaboration can enhance productivity and often produce better outcomes than innovating in isolation. These are heady times for IP. The renewed focus on co-creation and alliances has encouraged lawyers, IP attorneys, licensing profes-sionals and judges to reconsider the legal approaches to creating, sharing and using the outcomes of such joint endeavours.

While joint ownership may seem an obvious solu-tion, it can turn out to be a controversial issue in col-laborations. Whenever joint ownership is mentioned, experienced professionals immediately start listing all the “usual” reasons as to why it is not advisable: that, in many countries, joint ownership can lead to uncertainties about the need for consent to apply for, use, license, assign or enforce the jointly-owned IP rights; that in many countries co-owners can have rights of pre-emption where licensing and assignment are concerned; that it can lead to uncertainties as

to compensation where exploitation of the rights is involved… There are other reasons why joint IP ownership may not be desirable. But then comes the inevitable riposte: Why are you so concerned? After all you can always contractually arrange all that, can’t you?

Certainly, you can. You also can, for the most part, stay in control. As long as you are informed, careful and prepared to contractually assign the joint IP rights and duties associated with them. The articles included in this special issue discuss selected national laws and issues involved in the practice of joint ownership. What Aspects of Joint IP Ownership Are Covered?

There are many ways in which collaborating parties can shape and legally structure their relationships. Joint IP owner-ship—interchangeably referred to by some authors as ‘co-ownership’—is one of the structures. It generally arises in situations when at least two parties share interest in IP rights. Such rights typically include statutory IP rights—mainly patents, copyrights, and registered designs. All articles included in this edition focus on joint ownership of patents and copyrights.

Many authors also deal with joint ownership of trade marks, noting that some jurisdictions do not allow it. It is argued that joint ownership may con-travene the founding principle of trade marks law to ‘enable customers to differentiate goods and services from one another.’ Each co-owner may use the mark in a different way and therefore easily confuse or deceive customers who may have inconsistent ex-periences with the co-owned mark. Some countries occupy the middle ground and do not allow joint registration of marks, while permitting joint use and concurrent use. These aspects of joint ownership are also briefly discussed.

■ Sun Kim,MCM/Sungjoo Group,Director, Head of Legal,Seoul, KoreaE-mail: [email protected]

■ Vera Lipton,National Patent Analytics Hub, IP Australia,Manager,Canberra, AustraliaE-mail: [email protected]

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Similarly, confidential information and know-how may not be jointly “owned” in some jurisdictions. It does not explicitly fall under the definition of property rights, especially in countries with common law sys-tems. At the same time, confidential information will often be a valuable tradeable asset protected under contractual confidentiality obligations, the law of equity or specific trade secrets laws. Furthermore, if several parties develop confidential information jointly, they may each have rights to it. For these reasons, several authors examine joint ownership with regard to con-fidential information.

A further issue affecting joint IP ownership is the relationship between the parties that may be entitled to share interest in IP. In the absence of any agreement, joint IP ownership will typically be governed by statu-tory provisions. In the case of patents and copyrights, joint ownership comes about as a consequence of the joint creation of an invention or work, or because an interest in the IP is assigned to more than one person or organisation. There are, however, significant differ-ences in national laws with regard to the act of joint creation and the manner of assignment. Some of the differences are canvassed in the articles below. Why Focus on National Laws?

You may be asking why the focus on national laws when the world today is interconnected and global and collaborations will often involve partners residing in different countries. Indeed, the circumstances under which collaborations are formed vary considerably and many collaborations are international. Yet, the legal relationship between joint IP owners is primarily governed by applicable national law—whether chosen by the parties themselves or whether it is determined by other conventions.

Key ThemesKey themes emerging in this special issue are:• Joint IP ownership can support collaborative innovation if it is properly understood and contractually managed. • The effects of joint ownership differ significantly across different IP rights and across different jurisdictions. • The ability of the joint IP owners to use, exploit, assert, license or assign their portion of the rights, and seek compensation present immediate but not insurmount- able challenges. These need to be carefully considered in terms of the governing law, potential risks and impacts on the collaboration and existing relationships between the prospective joint owners. • Collaborations are increasingly global so our approaches also need to consider global trends and practices in law and policy, as well as the needs and wishes of the collaborating parties. • Ultimately, collaborations are originated by people and in considering options available to parties involved in joint projects, IP lawyers are engaged in broader human, economic, and social networks. There is a need to better understand how these networks interact and how the application of law might effectively support them.

We hope this special edition is useful for un-derstanding the key legal issues arising in joint IP ownership. ■

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Joint Ownership In AustraliaBy Rodney De Boos and Timothy Creek

What is Joint Ownership?oint Ownership” arises where two or more people have an ownership interest in certain property; whether that is real property or per-

sonal property. As a matter of Australian law, only ‘property’ can be owned. In the context of intellectual property, this limits the concept of joint ownership to the statutory intellectual property rights which, for the purposes of this paper, comprise patents, trade marks, registered designs and copyright.

Whilst confidential information is often referred to in definitions of “intellectual property,” it is not property. A person who is possessed of confidential information does not “own” that information.1 That person may either not disclose the information to another person but cannot stop anyone else from producing and using the same information or, if the information is disclosed, from further disclosing the information absent a contractual or equitable obliga-tion of confidence.

What then are the differences between the differ-ent forms of intellectual property in so far as joint ownership is concerned?How Does it Arise?

Joint ownership of intellectual property can arise either as a consequence of the process of creation of the particular subject matter of the intellectual property right or the assignment of an interest (or a portion of it) in an intellectual property right. For example, a contribution to an invention jointly with others can lead to joint ownership of a patent in respect of that invention. This paper does not deal with express assignments as a mechanism for creating joint ownership.

In each of the intellectual property regimes, the creative act and the rights of ownership are dealt with in different ways. Patents

Under the Patents Act 1990 (Cth) the creative act is one of invention. Whether two or more people are entitled to be granted a patent jointly will therefore

depend on whether both of them have engaged in the creative acts giving rise to the invention. To ascertain whether a person is an inventor for the purposes of entitlement to the grant of a patent, it is necessary to look at the contributions made to the invention described in the particular patent application. It is not necessary for an inventor to make an equal contribu-tion with others or to have contributed to any number of the ultimate claims; nor is it necessary for the contribution of each inventor to be joint. Each “inventor” can make an independent contribution and the only issue is whether the person in question made a material con-tribution to the inven-tion as claimed. Once it is established that a person is a co-inventor, then that person has an interest in the whole of the invention (being an equal, undivided share of the invention) and not just that part which is the result of his or her contribution.2

Where the makers of an invention are employees and they make the invention in the course of that employment then, prima facie, the employer owns the rights to the invention. However, this can be varied by contract and, importantly, is varied in the context of universities and similar institutions.3

Recent cases in Australia have made it clear that academics employed by universities to engage in research work may still own the rights to any inven-tions they create absent contractual obligations to the contrary. For example, where an academic is under no obligation of confidence in respect of research,

“J

1. See Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414.

2. See section 16 of the Patents Act 1990 (Cth), although that section deals expressly with ownership of a granted patent, and not the underlying invention.

3. See University of Western Australia v Gray (No 20) (2008) 246 ALR 603 (Federal Court of Australia); University of Western Australia v Gray (No 20) (2009) 259 ALR 224 (Full Court of the Federal Court of Australia).

■ Rodney De Boos, Davies Collison Cave Law, Consultant, Melbourne, Australia E-mail: [email protected]

■ Timothy Creek, Davies Collison Cave Law, Associate, Melbourne, Australia E-mail: [email protected]

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and is expected to manage and organise funding for the research work he or she undertakes, it cannot be said that the academic is under an obligation to make patentable inventions. If the academic is not under an obligation of confidence, it is completely within the province of the academic as to whether he or she publishes the invention, makes an applica-tion for a patent in respect of it or keeps it secret. In that situation, the academic will own the rights in respect of any inventions made and will be entitled to any patents granted in relation to the invention.Designs

The position in respect of registered designs is substantially the same as it is for patents. The person who creates a design is entitled to be registered as the owner, and where two or more people create a design then each is entitled to be registered as the owners of the design. The main point of difference between the designs system and the patents system is how each deals with a commissioned work. The Designs Act 2003 (Cth) expressly provides for a com-missioning party to be entitled to be recorded as the owner. However, under the patent system, the right remains with the inventor subject of any agreement to the contrary. Trade Marks

Under the Trade Marks Act 1995 (Cth), two or more persons can be registered as joint owners of a trade mark only if none of them is entitled to use the mark, except on behalf of all of them, or use will be in relation to goods or services with which all of the joint owners are connected in the course of trade. Thus, the ability of persons to be registered as joint owners of a trade mark is far more restricted than with the other intellectual property regimes. Copyright

Under the Copyright Act 1968 (Cth), a “work of joint authorship” is specifically defined as “a work which has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or authors.” Consequently, where the contribution of each author is separate and distinguishable from the contribution of any other author, then each will own copyright in their separate and distinct part of the overall work, and they will not be co-authors.

Establishing who are the authors of a particular work can be difficult. At one extreme, in the area of literary works, there is authority for the proposition that a person who compiles material for a book can be regarded as a co-author. This would appear to be an extreme view and may have been influenced by

the fact that the publishing agreement in respect of the book in question referred to the person who complied some of the material for the book as being an “author.”4 However, in the IceTV case,5 the High Court of Australia made it clear that in the case of literary works created by more than one individual, it will be a question of fact and degree which of them has expended sufficient effort of a literary nature to be regarded as authors, and that for a work to be protected as a compilation, “…the author or authors will be those who gather or organise the collection of material and who select, order or arrange its fixation in material form.”6 A further example is the context of copyright in cinematograph films. It has been held that the person who conceived of an idea for the filming of a trek on the Kakoda Track in Papua New Guinea, selected school boys to participate, obtained the necessary consents and attended to many of the administrative arrangements was a co-owner of the copyright in the film of the trek in conjunction with a television station which supplied blank tapes, cameras, sound equipment, a script and funded the camera operator and sound recordist.7 This was on the basis that the Copyright Act 1968 (Cth) provides that the owner of the copyright in a film is, prima facie, the “maker” of the film. A “maker” of a cinematograph film is the person who undertakes the arrangements necessary for the making of the film. Again, this may well be a finding at the extreme, but was not chal-lenged on appeal. However, one appeal court judge did note that the finding was “probably incorrect.”8

In the context of musical works, a song will not be a work of joint authorship where there are separate composers of the music and lyrics. As noted above, in order to be a work of joint authorship, each of the composers would need to have made an indistinguish-able contribution to each of the musical work and the literary work for them to be considered joint owners of the copyright in both the lyrics and the music. Equally, it would not be correct to say that the song was “jointly owned” because the property relevant to any claim of ownership is the distinguishable works: the musical work and the literary work, not the combination of the two in the form of the “song.”

The Copyright Act deals with ownership of copy-

4. Prior v Lansdowne Press [1977] VR65.5. IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009]

HCA14. 6. Ibid at [99].7. Seven Network (Operations) Ltd v TCN Channel Nine Pty

Ltd [2005] FCAFC 144.8. Ibid para 89.

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right in detail. While the author of a literary, dramatic, musical or artistic work is, at first blush, the owner of any copyright subsisting in that work; this is al-ways subject to modification by agreement and the specific provisions of the Act. For example, where an employee makes an artistic, dramatic, literary or musical work pursuant to an employment agreement, the employer will be the owner of any copyright subsisting in the work. This is varied in the case of works made for inclusion in a newspaper, magazine or similar periodicals. In these cases, the author retains copyright insofar as it relates to the reproduction of the work for inclusion in a book and reproductions of the work by way of copies made from the paper edition of the newspaper, magazine or similar periodi-cal. This latter right was reserved so that journalists would be entitled to royalties collected by collecting societies from media clipping services and the like.

As has been demonstrated above, there are sig-nificant differences between the various intellectual property regimes in Australia as to the ownership of intellectual property and, in some cases, differences from other jurisdictions. In general terms, it is not unusual for the ownership position to be regulated by agreement so as to modify or change the position which would otherwise apply. Furthermore, as will be seen from the next section, the use of agreements is often necessary in order to provide for an efficient exploitation of intellectual property rights.The Rights of a Joint Owner

When considering joint ownership of intellectual property, it is necessary to consider the pre-grant and post-grant positions of registered intellectual property rights. What is evident from such a consideration is that a high level of co-operation is required from the joint owners.

In the case of patents, registered designs and regis-tered trade marks, at a practical level, co-operation is required during the application process. In the case of patents, many decisions will need to be made by the joint “owners,” not the least of which is who will bear the costs of the application and prosecution of the patent to grant. In addition to those matters, joint owners must consider the issues of approving the drafting of claims and amendments and, if foreign applications are to be made, where those applications will be made and by what route. All of these decisions will need to be made against deadlines and, unless regulated by agreement, give each joint “owner” a right of veto which can be difficult and expensive to overcome by an “owner” wishing to prosecute an application.9 In this respect, unless regulated by

agreement between the parties, joint ownership is likely to give rise to difficult and time consuming is-sues between the parties.

In a joint ownership agreement, the parties seek to establish clear lines of responsibility. If the arrange-ment is between a university and a commercial party, the commercial party will want to ensure that it has sufficient control of the application process that its commercial objective can be satisfied. On the other hand, the university is likely to want to distance itself from costs and liabilities provided that it can hold the commercial partner to act in a commercially responsible manner and have an appropriate means of intervention on significant issues. Until recently, universities would also wish to retain experimentation and research rights in relation to the invention where the full rights of exploitation of the patent were granted to the commercial party or a third party only.10

In the post grant scenario, the rights of joint own-ers which attach to the various intellectual property rights differ as between those rights.

In the case of patents, the Patents Act provides that each co-owner is entitled an equal undivided share in the patent and is entitled to exercise the exclusive rights given by the patent for his or her own benefit without accounting to the other(s).11 However, no co-owner can grant a licence under the patent or assign it without the consent of the other co-owner(s). This rule is different, for instance, to the position which applies in the United States and can be varied by agreement. In the commercial context, it is usual for the position to be varied so that the commercial partner can exercise the right to grant a licence without obtaining consent, but perhaps on the basis that any licence granted will be on an arms length basis and on normal commercial terms.

In the case of registered designs and copyright, the

9. The Patents Act does include provisions whereby the Com-missioner of Patents can deal with disputes or disagreements between co-applicants or co-owners (see section 17).

10. From 15 April 2012, a new exception to infringement has been included in the Patents Act 1990 (Cth) as a result of the passing of the Intellectual Property Laws Amendment (Rais-ing the Bar) Bill. That exception provides that it is not an in-fringement of a patent to acts done for experimental purposes. While the Act will therefore provide a defence to universities and other entities wishing to engage in experimentation, even where they are co-owners and have granted exclusive rights to a third party, they might wish to enter into an agreement to provide for additional or broader rights for a co-owner to carry out experiments without risk of infringement.

11. Section 16 of the Patents Act.

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rights of co-owners would be the rights of tenants in common at law. This means that, in the absence of the consent of the other co-owner(s), one co-owner would not be entitled to exercise any rights in the relevant subject matter nor grant a licence.

In the case of registered trade marks, the Trade Mark Act requires that multiple owners of a mark can only exercise their rights as owner as if they were a single person. This is because, section 28 of the Trade Marks Act requires that, as between the registered owners, no one of them is entitled to use the mark except on behalf of all of them or in relation to goods and services with which all of them are connected in the course of trade.Enforcement

Ordinarily, co-owners will hold the relevant intel-lectual property rights as tenants in common rather

than as joint tenants. The basic difference between the two concepts is that there is a right of survivorship in a joint tenancy so that the survivor automatically takes the interest of the other on death. Under a tenancy in common, the interest of a deceased passes under the will of the deceased; or if there is no will, under the rules dealing with intestacy.

The intellectual property statutes do not deal specifically with enforcement by joint owners; this falls to be dealt with by the various Court rules in Australia. In all situations, one joint owner could take enforcement action but would need to join co-owners as defendants if they did not agree to be joined as plaintiffs. Beyond being named as defendants they would not be required to participate in the proceed-ings but would receive relevant documents served by the parties during the litigation. ■

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IP Rights In Austria

Joint Ownership Of Intellectual Property Rights In AustriaBy Sabine Fehringer and Thomas L. Bereuter

oint ownership in commonly created inventions, copyrights, designs and trademarks according to the Austrian law are discussed in this article.

InventionsUnder Austrian law it is undoubted that more

than one (legal) person may own one invention and its resulting patents. Specifically in the course of R&D-collaborations jointly owned inventions often occur due to the participation of several inventors and teams, respectively. Co-inventor is any person who contributes with a material creative share to the joint invention.1 The conclusion, however, as to who is considered to be a co-inventor and who is a simple collaborator may be difficult in particular cases due to the fact that an invention is a technical solution to a technical problem, which has to fulfill the crite-ria of novelty, of extent of subject-matter resulting in an inventive step and of industrial applicability. Therefore, such a conclusion focuses on the often tricky question of who made a creative contribution to the solution of a technical problem, finally form-ing the basis for the claims of a subsequent patent. This is not the discussion about the question of who conducted experiments or measurements under supervision, or who followed standard procedures, or who financed the resources needed to reduce the ideas to practice. After having clarified the issue of inventorship, the decision about the percentage of inventorship, and consequently joint ownership shares, is not an easy task. Therefore, mutual agree-ments among the employee-inventors documented in writing are mostly considered desirable among their employers and are rarely questioned. In other cases the inventive share is broken down into equal parts. Occasionally, this breakdown into equal parts is in-cluded in R&D contracts as a fallback rule if inventors cannot agree mutually on their contributions within a defined time frame.

Co-inventors automatically form among themselves a simple joint ownership organization pursuant to § 825 et seq ABGB (Austrian Civil Code), which comes into existence with the completion of the invention

and under which each co-inventor, according to § 829 ABGB, is a complete owner of a share.2 This is not in contravention to § 27 Sec 1 PatG (Austria Patent Law), according to which a patent owned by more than one owner may be granted without determination of the shares.3 The rights of several beneficiaries in intellectual property rights may in single cases also be vested in a civil law partnership pursuant to §§ 1175 et seq ABGB, if a pooling for commercialization or a common purpose is also intended.4 For the differentiation between these two ownership organization forms it is crucial to consider two aspects. Firstly, it has to be clarified whether the activity is deemed to be a commercial ac-tivity under the Aus-trian Commercial Code. Secondly, it has to be discussed if the provi-sion of § 178 UGB (Austrian Commercial Code) is applicable, a clause which establishes joint liability of the joint owners for the actions of only one owner. This provision may be interpreted as an obligation, thereunder, to register either as personal partnership or personal limited partnership within the Commer-cial Register.

If a patent is filed by several persons, the legal relationship among them falls under the general civil law regime, i.e. §§ 825 et seq ABGB.5 As mentioned above, a patent owned by more than one owner may

J

2. Reitböck, Der Begriff der Diensterfindung und angren-zende Rechtsfragen, 128; Gamerith, Sind Rechtsgemeinschaften an Immaterialgüterrechten Gesamthandgemeinschaften? ÖBl 1996, 63.

3. Reitböck, Der Begriff der Diensterfindung und angren-zende Rechtsfragen, 129.

4. Gassauer-Fleissner, Die Rechte mehrerer Berechtigter an Immaterialgüterrechten, ÖBl 2009/29.

5. OLG Wien 6.12.1995, 6 R 553/95–Belüftungssysteme–ÖBl 1996, 153.

1. Reitböck, Der Begriff der Diensterfindung und angren-zende Rechtsfragen, 119 mwN.

■ Sabine Fehringer, DLA Piper Weiss-Tessbach Rechtsanwälte GmbH, Partner, Vienna, Austria,E-mail: [email protected]

■ Thomas L. Bereuter, val»IP e.U., CEO, Vienna, Austria E-mail: [email protected]

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be granted without determination of the shares in the patent.6 The right to a patent filing or to a patent as a whole or in parts may be transferred to other parties by legal transaction, judgment or last will. As long as several patent holders are registered in the patent registry without clarification of their share in the patent, they are restricted in their disposition, as they may not transfer a determined share to a third party, but they may only transfer their undetermined share in the patent. The transfer of a share determined in its size is therefore only possible if the existing co-owners have determined the share by agreement.7 Upon determination of the share, the duty to agree mutually ends. Each co-owner is then individually entitled to pursue patent infringement.

It is in any case recommendable to decide among the co-owners as to who should administer IP-proceedings (filings, maintenance, defense of intel-lectual property rights), bear the costs, as well as how decisions are made (e.g. selection of countries for nationalizations, by whom exploitation shall be effected and how the costs and the results are dis-tributed). In case of doubt, the grant of rights of use to third parties is vested to all co-owners together (§ 833 ABGB). This means that a majority decision in the sense of § 833 ABGB and the validity thereof require that all co-owners must have had the oppor-tunity to comment on the intended grant of rights of use.8 If the majority intends to conclude a license with a third party against the will of the minority, but does not deposit a security, the approval of a judge is required, as such an out-licensing is a major change in the sense of § 834 ABGB.9 Finally, it is advisable that co-owner organizations agree on such issues in advance. Rules regarding results are to be laid down. For example, costs and risks of exploitation, the kind and extent of the license fees, how cost and income are distributed, and how far the other owners partici-pate from the co-owners own use. It is questionable, to what extent the own use of a patent requires the approval of the co-owners. As every co-owner may use the joint invention or patent only in a way that

the others are not prejudiced, it may be assumed that the exploitation by the co-owners through produc-tion, marketing and use may only be effected based on an agreement of use between all the joint owners concerned or based on an agreement of use issued by the court pursuant §§ 833 et seq.10

The employer will only enjoy part ownership of the invention if not all inventors inform him about the invention. However, with regard to the share of an employee who does not notify, a bona fide acquisi-tion pursuant to § 367 ABGB should be considered.11 On the one hand, Reitböck12 argues that the transfer obligation prevails to the provisions of § 829 ABGB whenever a co-inventor, based on employee’s inven-tion rules, was obliged to the transfer of his share to his employer. Thus, the question to infringe the rights of the other co-owners does not arise. It is therefore assumed that an employer who only acquires a part of the invention may use by himself the share com-mercially without the approval of his co-owners, who should have had transferred their share under employ’s invention rules.13 Gamerith,14 on the other hand, believes that the exploitation in principle may only be affected based on an agreement of use be-tween all parties based on the principles pursuant to §§ 833ff ABGB. Nevertheless, wherever the employer still has a right to claim the transfer of the owner-ship for a part of the invention, but such a transfer did not take effect, the joint ownership organization (consisting—among others—of the employer and the inventor-employee) will decide about the exploitation under the joint ownership rules. The employed co-owner concerned has a duty to offer its ownership share in the form of a right of use, when the invention regarding its content falls in the area of business of his employer. This approach shall specifically prevent the own use by the employee.15

Regarding R&D collaborations, agreements are usually made in advance between the parties. Those

10. Gamerith, Sind Rechtsgemeinschaften an Immaterialgüt-errechten Gesamthandgemeinschaften? ÖBl 1996, 63.

11. Regner/Wallentin/Schima in Hausmaninger/Petsche/Var-tian, Wiener Vertragshandbuch, Bd 2 Wirtschaftsrecht, 524.




15. Reitböck, Der Begriff der Diensterfindung und angren-zende Rechtsfragen, 133; K. Mayr in Zeller Kommentar zum Arbeitsrecht, 1886 mwN.

6. Gamerith, Sind Rechtsgemeinschaften an Immaterialgüter-rechten Gesamthandgemeinschaften? ÖBl 1996, 63.

7. OLG Wien 6.12.1995, 6 R 553/95–Belüftungssysteme–ÖBl 1996, 153.

8. Reitböck, Der Begriff der Diensterfindung und angren-zende Rechtsfragen, 129; Gamerith, Sind Rechtsgemeinschaften an Immaterialgüterrechten Gesamthandgemeinschaften? ÖBl 1996, 63.

9. Gamerith, Sind Rechtsgemeinschaften an Immaterialgüter-rechten Gesamthandgemeinschaften? ÖBl 1996, 63.

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agreements define in the case of joint ownership: who files in which name; who bears the costs for obtaining the intellectual property protection; who is responsible for the exploitation or enforcement or for payment of the employee’s invention remuneration. As discussed above, it is essential that an agreement is reached in time as to the joint ownership shares as well as that a procedure is agreed upon how shares may be determined and allocated. Under the Austrian Patent Act, the inventor is entitled to an employee’s remuneration based on the value of the invention, but not on the commercial success of the employer with this invention. In order to avoid liability risks, rules should be established to ensure that all inventors get a fair share of remuneration regarding the invention, irrespective of who is the actual employer. Specifically regarding high-flyer inventions, attention should be paid that the partner who effectively exploits the invention provides the financing of the employee’s remuneration.

In R&D collaboration agreements, the parties usu-ally agree that the respective partner is obliged to claim relevant inventions of their employees in order to enable the partner to fulfill his contractual duties regarding the availability of inventions. If there is no automatic ex lege right for the employer to claim the invention, the employer will need to agree in writing with his employees. Unless expressly regulated in ap-plicable collective bargaining agreements, it will be necessary to emphasize their duty to offer the inven-tions to the employer and the latter’s claim to acquire the inventions under §12 PatG (Austrian Patent Law) within a four-month notification period. Comparable agreements should also be concluded with executives of public limited companies, sub-contractors, manag-ing directors who are also shareholders in a company and shareholders of a company, generally, in order to enable the company to claim their inventions if related to the business of the company. An automatic ex-lege rule for universities exists under § 106 UG (University Organization Act). Universities have the right to claim the inventions of their employees within a three-month period following the employee’s notification of an invention. Thus, universities only need to conclude express agreements regarding the claim of inventions with students and guest research-ers who are not employed by the university, as well as with sub-contractors. As in R&D collaboration agree-ments, provisions regarding the transfer of results are made; faulty agreements to claim the inventions from their employees might cause a severe non-performance of the relevant R&D partner, resulting

into representations, warranties and liabilities of this partner. If a party files a patent application or transfers an invention to a third party that is filing for a patent, with regard to an invention that has not been properly transferred to the employer, the employee may then file a complaint for denial of the patent and transfer of the patent pursuant to § 49 PatG.

Concerning the issue of which party finally bears the costs of the employee’s remuneration, it is often agreed that the collaboration partner holding the rights to exploit the technology is covering the em-ployee’s remuneration, unless the invention has been transferred to that collaboration partner against a fair and adequate transfer price. This does not mean that the employee gets a direct right for reimbursement against this collaboration partner, but it just means that this collaboration partner assumes the liability. However, if the employee agrees, the remuneration duty may even finally be transferred to the third party.16 Also, if an employee expressly agreed to the transfer of ownership or use in the patent to a third party, it implies that he waives his right against his employer to claim that the latter does not use the invention according to its economic value. Employees however may oppose arguing that they had made such an agreement under the constraints of an employee relationship, which leads to a legal uncertainty for an employer who decides for such a legal construction. Unfortunately, no case law in this respect exists so far.

It is always possible that the ownership in a jointly owned intellectual property right is transferred in total or in part to only one party, and that the transferring party only retains licensing rights. Some insolvency risks have to be considered: If a patent owner becomes insolvent and the receiver exploits the patent, it cannot be guaranteed that the acquirer of the patent will also assume all licenses granted under the patent out of the insolvency estate as the receiver has specific termination rights with regard to such license agreements.

With regard to the publication rights laid down under § 106 Sec 1 UG, vast rights for scientific publishing are assigned to the university staff. In research projects at the university it is, therefore, advisable to arrange with the potential university inventors individual confidentiality arrangements or to agree with the uni-versity specific confidentiality arrangements regarding

16. Schwartz, Zur Übertragbarkeit der Rechte und Pflichten an Diensterfindungen aus öffentlich-rechtlichen Dienstverhält-nissen, ÖBl 2001, 7.

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their employees, with the purpose of maintaining the novelty of an invention as a pre-requisite for a priority filing of a patent.Copyright

A joint ownership relation is built, when several authors have created a work, where the results are not separable. However, if the contributions of each creator are separable, only partial copyright owner-ship is given. The law gives protection for such a partial copyright ownership especially in the case that several kinds of copyright works are assembled (e.g. film). Each change or exploitation of any co-owned copyright requires the approval of all copyright hold-ers.17 Such approval may be replaced by a court judg-ment if the author refuses such an approval without reasonable cause.18 Each co-author is entitled on its own to pursue copyright infringements at court. It is important for employers to clearly define the duties of the employee, as copyright created outside the duties is owned by the employee himself.Designs

Designs are owned by its creator. In all those cases where the designs are created by an employee within

the ambit of the employee’s duties under the employ-ment agreement, the employer obtains ownership, unless otherwise expressly agreed. Joint ownership in designs are possible. Similar issues arise as described under the patent section.Trademarks

Joint ownerships in trademarks are possible, although the Austrian Trademark Act does not pro-vide any specific rules in this respect. Through the non-separable ownership structure it is assumed that a part ownership in a trademark may not be transferred, but that the transfer has to be effected by all co-owners.19 Conclusion

The Austrian legal provisions define just a frame for joint ownership in IP. For the purpose of commercial exploitation, it is highly recommended to lay down the rights and duties within R&D collaborations in a detailed written agreement. Employers also need to take care of the contracts with all collaborators en-gaged in the creative process in order to guarantee the availability of all rights required for commercialization or any other use. ■

19. Salomonowitz in Kucsko, marken.schutz, 357 mwN; aA Gassauer-Fleissner, Die Rechte mehrerer Berechtigter an Imma-terialgüterrechten, ÖBl 2009/29.


18. Gamerith, Sind Rechtsgemeinschaften an Immaterialgüt-errechten Gesamthandgemeinschaften? ÖBl 1996, 63: dies soll im streitigen Verfahren erfolgen.

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A Brazilian Perspective

Joint Intellectual Property Ownership: A Brazilian PerspectiveBy Juliana L. B. Viegas

Introductions a lawyer, I used to treat all issues relating to intellectual property ownership according to the objective rules of law, and was greatly

surprised when, representing a private company in the process of negotiating a joint research and develop-ment (R&D) agreement with a public research institu-tion in São Paulo, one of the institution’s researchers involved in the program approached the discussions with a very emotional attitude.

In fact, the researcher had been employed by the public institution with the purpose of carrying out R&D, and therefore the ownership of the possible intellectual property (IP) resulting from that joint program would, by law, belong to the institution and to the private company contributing thereto. However, the researcher felt that, having spent a good many years of her life studying a certain mol-ecule that would be used in the program, she had certain “parental” rights to the resulting IP. And, as we all know, motherhood feelings may be highly emotional indeed.

This article has the purpose of discussing—not emotionally—the rules established by Brazilian laws concerning joint ownership of IP and the resulting potential questions and problems.I. When and How IP Joint Ownership May Occur

IP is governed by several laws in Brazil: the Indus-trial Property Law—IP Law (Law 9279 of May 14, 1996); the Plant Variety Protection Law (Law 9456 of April 25, 1997); the Software Law (Law 9609, of February 19, 1998); the Copyright Law (Law 9610 of February 19, 1998); the Integrated Circuits Pro-tection Law (Law 11484 of May 31, 2007) and their regulations. In addition to the specific IP legislation, the Brazilian Innovation Law (Law 10973, of De-cember 2, 2004) also contains rules relating to joint ownership of IP resulting from R&D programs carried out jointly by public universities or public research institutions and private companies.

Joint ownership may result from several different circumstances. Co-ownership may be original—that is, born together with the IP right itself—when re-sulting from (i) application by more than one author,

such as in the case of an IP right resulting from joint R&D, or in the case of employees’ inventions (see Section II below); or (ii) application by the heirs or successors of the author(s); or (iii) application by authors’ assignees.

Alternatively, joint ownership may be subsequently acquired, when a singly owned IP becomes jointly owned as a result of suc-cession—when more than one heir inherits the rights, or as a result of total or partial assign-ment of the IP asset to more than one assignee.

It should be noted that, according to the Brazilian IP Law presently in force, no joint-ownership of trademarks is allowed.II. Joint Ownership Resulting From Inventions by Employees

Brazilian IP legislation1 contains detailed provi-sions concerning the ownership of inventions, utility models, industrial designs, cultivars, software or inte-grated circuits developed by employees or suppliers of services; and three situations are contemplated. In the first two cases, there is no resulting joint owner-ship; but in the third situation, the IP Law provides for a mandatory 50/50 joint ownership, unless the parties agree otherwise.

2.1. The first situation contemplated by the IP Leg-islation occurs when the employee or the service supplier was hired to perform R&D, or when the nature of the services the employee or service supplier was hired to perform is compatible with development of inventive activity and results in IP. Then the invention, utility model, industrial design, cultivar, software or integrated circuit design will belong exclusively to the employer. In this case, the remuneration due to the employee or supplier of services will be limited to the previ-

A

1. Specifically (i) the Industrial Property Law in articles 88 to 93 and 121; (ii) the Plant Variety Protection Law in articles 38 and 39; (iii) the Software Law, in article 4; (iv) the Integrated Circuits Protection Law, in article 28.

■ Juliana L. B. Viegas,Independent Lawyer and Consultant, São Paulo, BrazilE-mail: [email protected]

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ously agreed salary or fee, except if the labor or services agreement provides otherwise. In addition, the IP Law provides that, in the ab-sence of evidence to the contrary, an invention, utility model or industrial design for which a patent or industrial design protection is applied for by an ex-employee or service provider within one (1) year from the termination of the labor or services agreement will be deemed to have been developed while the contract was in force.A similar provision exists in the Plant Variety Pro-tection Law, which defines2 that, except if other-wise agreed, a new plant variety or an essentially derived cultivar for which protection is applied for within thirty-six (36) months after termination of the corresponding labor or services contract is deemed to have been developed during the term of the agreement, and therefore belongs to the employer. The Innovation Law contains a fairly similar concept,3 providing that, when a public entity hires a private company or a consortium of companies to carry out R&D activities to solve specific technological problems, the resulting IP will belong to the public entity, even if the cor-responding protection is sought within two (2) years after termination of the contract. 2.2. A second situation occurs when the IP re-sults from the sole contribution of the employee or provider of services, totally unconnected to his or her work, and not resulting from the use of resources, means, data, materials, facilities or equipment of the employer. In this case, the IP will belong exclusively to the employee or pro-vider of services. This situation is so obvious that it would not have been necessary to include it in the mentioned IP legislation, but nevertheless the case is expressly mentioned.2.3. A third situation is provided for only in the IP Law. Article 91 of the IP Law provides that the ownership of the IP will be common, in equal parts (except if otherwise established in the labor or services agreement) when the employee or service provider was not hired for R&D or inven-tive activities, but the IP results from his or her personal contribution, and also from resources, data, means, materials, facilities or equipment of the employer. This case of legally provided co-ownership is not expressly contained in the Plant Variety Protection Law, or in the Software Law

or in the Integrated Circuits Protection Law, but nothing prevents an employer, in those business areas, from including a similar disposition in a labor or services agreement. However, such a mandatory co-ownership in the patent area has attracted criticism, as it is likely to cause disputes or disrupt the relationship between the parties, especially so when the co-owners are an employer and an employee or provider of services, who predictably have divergent views and ambitions.

III. Joint Ownership Under the Innovation Law

The Brazilian Innovation Law (Law Nr. 10973) was enacted on December 2, 2004 to stimulate scientific and technological research and to introduce innova-tion in the manufacturing environment. It allows public universities and research institutions, among other things, to enter into several types of arrange-ments with private enterprises for R&D purposes. The articles governing certain areas of those arrangements provide for mandatory or suggested joint ownership of the IP resulting from the R&D efforts.

Examples of such mandatory or suggested joint ownership are:

3.1. Article 5 of the Innovation Law contains a mandatory joint-ownership. It provides that the Federal Government and its entities are authorized to hold minority participations in the capital of specific purpose private companies organized to develop scientific or technological projects to obtain innovative products or processes. The sole paragraph of article 5 establishes, quite surpris-ingly, that the resulting IP will not belong to the company that developed it, but it will be assigned upstream to the company’s stockholders, in the same proportion of their participation.3.2. Article 9 of the Innovation Law is an example of suggested joint ownership of IP between public entities and private companies. The article pro-vides that public research institutions are allowed to enter into partnership arrangements with other public or private entities for R&D purposes. The property of the resulting IP shall be assigned (except if otherwise provided in the agreement) among the participants, in the proportion corre-sponding to the value of the existing knowledge of each of the parties at the start of the project, and of the value of the human, financial and material resources contributed by each party. The valuation of human, financial and material resources is quite straightforward, but the existing knowledge that

2. Plant Variety Protection Law, article 38, paragraph 2.3. Innovation Law, article 20.

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each of the parties carries to the project is rather difficult to evaluate, and may be subsequently questioned by administrative auditors.4

Joint IP ownerships between public entities and private enterprises carry a significant potential for conflicts, as the mission, goals and decision making processes of the co-owners are completely different and often opposite.One of the more obvious potential conflicts between, on one side, universities and public research institutes and, on the other side, private companies, when the protection of IP rights is con-cerned, is the possibility and timing of publishing the results of a research. Career advancement in the academic world is enhanced by publications, while private enterprises’ interest in patenting an invention in certain jurisdictions depends on abso-lute novelty. Because of its potential for conflicts, this topic must be strictly regulated in the prior agreement between the parties.

IV. Rights and Obligations of Co-owners of IP Rights

In spite of the fact that the IP legislation and the Innovation Law provide for certain circumstances in which joint IP ownership is mandatory or suggested, the mentioned laws do not regulate the relationship between the co-owners. In order to determine rights and obligations of IP co-owners, one has to look up-wards to the general rules of the Brazilian Civil Code (Law 10406 of January 10, 2002). In fact, there is no disagreement among scholars as to the selective ap-plicability of rules relating to co-ownership of tangible goods to joint ownership of IP rights.

When two or more individuals or entities own the same ideal rights upon the same asset (be it material or immaterial), and regardless of whether or not they own identical shares of said asset, such co-ownership constitutes a condominium. It is possible, thus, to ap-ply to the co-ownership of IP rights Civil Code rules applicable to a condominium of a general nature. It is necessary, however, to select those rules that are compatible and therefore completely applicable to IP rights, and those that are incompatible therewith and thus inapplicable, due to the specific nature of IP rights. In view of the few legal opinions, comments and jurisprudence on the matter, good old common sense will have to be exercised in selecting which rules are applicable.

The thirteen articles of the Brazilian Civil Code regarding condominium in general will be briefly analyzed as to their compatibility and applicability to IP rights.

4.1. As to rights and duties of the co-owners, Ar-ticle 1314 of the Civil Code provides that each of the co-owners may:

4.1.1. Use the jointly-owned asset according to its purpose.4.1.2. Exercise all rights compatible with the undividable nature of the asset.4.1.3. Reclaim it from third parties and defend its possession. 4.1.4. Transfer his or her ideal quota thereon or use it as a guarantee.4.1.5. The sole paragraph of article 1314 estab-lishes that none of the co-owners may change the purpose of the common asset, or allow a third party to use or exploit it without the con-sent of the other co-owners.

Most of the provisions of article 1314 are ap-plicable to IP rights, but the co-owners are also free to agree otherwise. In fact, each of the joint owners of any type of IP right may use it within its purpose. Unless the co-owners agree otherwise, none of the co-owners needs the other co-owners’ authorization to use the IP asset, that is, each of the joint-owners enjoys full rights upon its object. As to the right mentioned in 4.1.2, indeed the IP asset is not dividable, inasmuch the IP right is upon the creation itself, upon the creator’s con-cept. The object of the IP property is, therefore, undividable. However, as opposed to a material object, the IP asset may be concurrently used by all co-owners without losing its identity, its value or any of its features. Each of the joint-owners of an IP asset may independently reclaim it from whoever uses it without authorization and defend it against infringers. The right mentioned in 4.1.3 is, therefore, totally applicable.However, the right mentioned in 4.1.4 is not fully applicable to IP assets. Let’s assume the case where private company “A” enters into a joint R&D program with a public research institute “B,” and company “A” finances the program. The resulting IP is jointly-owned by company “A” and by the research institute “B.” If “B” decides to sell its share in the IP asset, “B” should not be allowed to sell it to a competitor of “A,” otherwise “A” may suffer significant damage. Therefore, the right

4. Brazilian public administration entities are subject to reviews by the so-called Accounts Courts (“Tribunais de Contas”).

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mentioned in 4.1.4 above, when applicable to IP rights, should not be exercisable without the other co-owners’ consent. Attorneys assisting clients in this situation should make sure to include a provi-sion to this effect in the prior agreement among co-owners. The right mentioned in 4.1.5 is, on the contrary, totally applicable to IP rights. Unless the co-owners agree otherwise, none of the co-owners is automatically allowed to license the IP asset to any third party without the other co-owners consent. Scholars who have analyzed this issue argue that, if the license is exclusive, that is, if by licensing the IP asset, the co-owner is not adding another competitor to the group of exploiters of the asset, then no authorization from the other co-owners should be necessary. However, considering the case mentioned in the preceding paragraph, it seems reasonable that the co-owners not be al-lowed to license the asset to a competitor of the other co-owners, regardless of the license being exclusive or not. Such restrictions should be included in the contract among the co-owners.4.2. Article 1315 of the Civil Code establishes that each of the co-owners must share the expenses relating to maintenance of the assets and to bear the burdens to which the asset is subject. For this purpose, unless the parties agree otherwise, the ideal quotas of each joint-owner are presumed to be equal.This provision is totally applicable to the joint-ownership of IP rights, particularly so when the IP right in question is a patent, or an industrial design or any other IP right that requires the pay-ment of annuities to maintain the validity of the asset. Again, unless the parties agree otherwise, each of the co-owners must pay its share of the maintenance expenses, and in the absence of stipulations to the contrary, all quotas are deemed to be equal. 4.3. Article 1316 of the Civil Code determines that a co-owner may excuse itself from paying expenses or debts required by the jointly-owned asset, if said co-owner renounces its ideal part in the asset. The first paragraph provides that, if the other co-owners assume those expenses and debts, they benefit from such withdrawal by acquiring the ideal part of the renouncing co-owner, proportionally to the share of the payments they assume. The second paragraph deals with the situation where there are no other co-owners willing to assume said payments, in

which case the common asset will be divided.The rules contained in the head of the article and in the first paragraph are applicable to IP assets. It should be noted that the non-paying co-owner will be excused only in case it voluntarily renounces its right. That is, the non-complying co-owner cannot be automatically expelled from the condominium. On the other hand, the provision of the second paragraph is not applicable; an IP asset cannot be divided. In case no other co-owners are willing or able to assume the debts and expenses of the withdrawing co-owner, the IP asset can be sold, or be abandoned and expire. 4.4. Article 1317 determines that when a debt relating to the co-owned asset has been made by all co-owners, without discriminating each party’s share therein, and if the co-owners are not declared severally liable, each of the co-owners shall be liable proportionally to its share in the common asset.Nothing in this provision is incompatible with jointly-owned IP rights.4.5. Article 1318 rules that the debts made by one of the co-owners, to the benefit of the common asset, obligate only the party that has incurred them. But the co-owner that has assumed such debts has the right to collect their share of the payment from the other co-owners.Again, the principles established by this article are compatible with co-ownership of IP rights.4.6. Article 1319 of the Civil Code is very rel-evant, as it declares that each of the co-owners must report to the other co-owners the income that it has received from the common asset, and is liable for the damages caused thereto. When applicable to IP assets, this provision seems to indicate that a co-owner that licenses the jointly-owned asset to a third party must report and share with the other co-owners the royalties so received. But it is not clear whether the poten-tial income generated by the use of the IP asset by the co-owner itself is also subject to reporting and sharing with the other co-owners.It is very important, thus, to include specific provi-sions governing this issue in the prior agreement between the parties.4.7. Articles 1320 and 1321 are not applicable to joint ownership of IP rights. They deal with the possibility of the co-owners requiring, at any time, the division of the common asset, which is not possible in connection with an IP asset.

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4.8. Article 1322 provides that in case the com-mon asset is not dividable, and the co-owners are not willing to assign it to one of them (the others being indemnified), the asset shall be sold and the proceeds shall be allocated to the co-owners. In identical conditions, the asset shall be prefer-ably sold to one of the co-owners rather than to a stranger, and, among the co-owners, it will be sold to the one that has contributed more to the asset, or to the one owning the larger share.The sole paragraph of Article 1322 regulates the situation where none of the co-owners has contributed to the asset, and all co-owners own equal shares therein; in this case, the parties shall proceed to a public bid, but, before assigning the asset to the higher bidder, another bid shall be made only among the co-owners, and the asset shall be allocated to the co-owner higher bidder. In identical conditions, the asset shall be allocated to a co-owner rather than to a stranger.These detailed provisions are compatible with jointly-owned IP rights.4.9. The following Civil Code articles deal with the condominium management and article 1323 provides that the co-owners may decide to ap-point a manager to the common asset, who may be a stranger to the condominium. If the asset is leased, in identical conditions a co-owner will be preferred rather than a stranger.Nothing in this article is incompatible with jointly-owned IP assets. It is highly advisable to appoint a manager to administer an IP portfolio, even if it includes jointly-owned IP assets. The manager may be one of the co-owners or a third party.4.10. Article 1324—very important—provides that the co-owner who manages the asset without opposition from the others is assumed to represent them all.This provision is applicable to jointly-owned IP rights.

4.11. Article 1325 deals with the decision process, and establishes that deliberations in co-owners meetings will be decided by majority, the major-ity being calculated according to the value of the shares owned.This provision is not incompatible with joint IP rights.4.12. Article 1326—also very important—deter-mines that the income resulting from the common asset—except if otherwise provided in an agree-ment or in a will—shall be allocated proportionally to the shares owned.

Again, nothing here is incompatible with jointly-owned IP rights.Conclusion

The provisions of the Civil Code, although not ex-pressly addressed to IP rights, may selectively apply thereto, and their applicability must be analyzed on a case by case basis. In any event, a diligent lawyer will foresee those circumstances where a Civil Code provision may be superseded by an agreement be-tween the parties, and will provide in a prior contract, the rules that will govern the relationship between co-owners. ■

ReferencesBarbosa, Denis Borges. Uma Introdução à Proprie-

dade Industrial. Rio de Janeiro: Lumen Juris, 2003.Direito da Inovação (Comentários à Lei n.

10973/2004, Lei Federal da Inovação). Rio de Janeiro: Lumen Juris, 2006.

Cerqueira, João da Gama. Tratado da Propriedade Industrial, edition revised by Newton Silveira and De-nis Borges Barbosa. Rio de Janeiro: Lumen Juris, 2010.

Fisher, Frank. O Regime de Co-Propriedade em Patentes. Available at: www.dannemann.com.br/files/FFI_Regime_de_Co_Propriedade_em_Patentes. p.d.f., accessed on June 27, 2012.

Silveira, Newton. Propriedade Intelectual. Barueri, SP: Manole, 2011.

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Entitlement In Chile

Questions Of Entitlement In Chile, The Interplay Of Joint Ownership And Public Funding Of R&D In ChileBy Juan Francisco Reyes

n any transaction involving some form of Intel-lectual Property Right (“IPR”), the question of entitlement of the assignor/licensor/franchisor

(“Owner”) to the corresponding IPR must be ad-dressed before the assignee/licensee/franchisee (“Li-censee”) can peacefully exercise any rights afforded to her under the agreement. Accordingly, the question of who is entitled to any given IPR under local law becomes paramount before entering into any agree-ment with an Owner. Proper due diligence performed by a local expert will limit most risks in this regard. However, it is nonetheless important to understand and weigh the risks underlying any entitlement is-sues before entering into negotiations with a third party who allegedly owns an IPR. How can one know whether the alleged owner does indeed own the IPR, or if she is subject to any limitations (legal or otherwise) as to her ability to enter into an agree-ment concerning her IPR? The Licensee will require proper warranty and indemnity clauses, but should remain aware of the general local rules concerning entitlement, especially when joint developments are at issue, government or private grants have funded the research leading to the development of the IPR, or when a government agency appears as the Owner or as a joint owner.

This short essay intends to provide an overview of the general rules concerning entitlement to IPRs under Chilean Law and to alert the reader of issues that can arise when entering agreements concerning IPRs, joint ownership and subsidized innovations under Chilean law.Who is Entitled to What?

The general rule is that entitlement to innovations or creations eligible for IPR protection lies with the inventor or the author. Transactions concerning IPRs usually involve the inventor or the creator, inasmuch as the law gives them the right to the Intellectual Property they generate. Under Chilean Law, how-ever, there are diverse provisions which contemplate exceptions to this general rule. These rules are scat-tered throughout Law 19.039 (the Industrial Property

Act)1 and Law 17.336 (the Intellectual Property Act).2 The Industrial Property Act includes provisions

altering the general entitlement rule as it relates to employers’ rights over employees’ works (art. 68 and 69) and universities’ entitlement to the work of their researchers (art. 70). The Intellectual Property Act includes provisions altering the general entitlement rule as it relates to software development (art. 8); certain compilations; encyclopedias; works appear-ing in journals, magazines and periodic publications; works produced by news agencies; works transmitted through radio or TV stations (Art. 24); cinematograph-ic works (Art. 25); or copyrightable works created by workers employed by the government or government agencies in such capacity.3 Accordingly, if the IPR involved in the agreement you intend to enter falls under any of the above mentioned categories, and you are dealing with the inventor or author directly, such involvement should raise a red flag.Agreements Concerning IPRs and Their Formalities (if any)

When dealing with owners of IPRs, the rights to ownership come into play in numerous types of agree-ments. Agreements concerning IPRs regulated by the Industrial Property Act, irrespective of whether they are executed in Chile or abroad, need not comply with any specific formalities4 (i.e., there is no need for notarization or legalization) to be legally binding. However, for publicity purposes and to establish the enforceability of the agreement before third parties, the agreement (or an abstract thereof signed by both parties) must be recorded before the Chilean National Industrial Property Institute (“INAPI”). Agreements

I

1. The Industrial Property Act contemplates rules concerning acquisition, transfer and enforcement of trademarks, patents, utility models, industrial designs and drawings, layout design of integrated circuitry, trade secrets, appellations of origin and geographical indications.

2. The Intellectual Property Act, in turn, contemplates rules concerning acquisition, transfer and enforcement of copyrights and related rights.

3. See article 88 of the Intellectual Property Act.4. See article 14 of the Industrial Property Act.

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concerning economic rights pertaining to IPRs regulated by the Intellectual Property Act, especially where they concern the assignment of an IPR, must be specific as to the scope of the agreement5 and be notarized and subsequently recorded with the Intel-lectual Property Registrar’s Office.6 Moral rights7 per-taining to IPRs regulated by the Intellectual Property Act cannot be subject to any kind of agreement or limitation, and thus the author retains them despite any clause indicating otherwise.8

Joint OwnershipNeither the Industrial Property Act nor the Intel-

lectual Property Act limits the possibility of joint ownership. What happens if you are interested in an IPR jointly owned by two or more parties? Except for specific situations contemplated by the Acts,9 neither includes express provisions on how the rights stem-ming from jointly-owned IPRs can be maintained, transferred or exercised. Thus, parties are free to establish their own provisions regarding the condi-tions for maintaining, transferring or exercising jointly-held rights through an agreement, such as a Joint Development Agreement (“JDA”). In the absence of such a contractually established obligation, general provisions included in the Civil Code will govern the joint ownership of IPRs. If no such contractual provi-sions have been established, one owner, acting alone, cannot transfer the rights to any jointly-held IPRs.

Owners of jointly-held IPRs do have some options. If the owner has been previously appointed as the administrator of the IPR, she is free to enter into agreements related to the jointly-held rights indepen-dently. Similarly, if entering into agreements related to the jointly-held rights is approved by the other joint owners, she may proceed with such execution. A joint owner is also free to assign her share of the rights to a third party, and ownership of said share will prevent the remaining joint owners from exercising the rights stemming from the IPR against the third party assignee.IPR Resulting From R&D Financed by a Third Party (Public Or Private)

Chilean authorities have made incentivizing Re-

search and Development a top priority. To this ef-fect, many measures have been taken by the Chilean government. A significant scholarship program that funds Masters and Ph.D. degree studies both in Chile and abroad has been enhanced. It has established an inter-secretarial innovation committee tasked with the design of a long-term R&D strategy. Diverse govern-ment grants aim to strategically cover various research pipelines. The establishment of an office in Chile for reputed International Research Centers of Excellence is being publicly subsidized. Tax incentives have been created which allow private entities to fund R&D projects (of their own or oth-erwise) in exchange for a tax credit. The credit amounts to one third of the out-of-pocket R&D expenses, with a cap rising to slightly over three million dollars a year and the ex-cess being tax-deductible as an expense by the entity funding the R&D.

While it has taken time, and some shaky starts, these incentives have been able to kick-start local R & D. However, many of the incentives established by the Chilean government, especially the public subsidies and tax incentives, while effective, rarely come with no strings attached.So, What Happens if the Owner’s R&D Which Led to the IPR Was Funded by Public Subsidies or Tax-Incentivized Private Funding?

In principle, problems should not arise regarding the entitlement to the IPR. However, a distinction should be made between IPR resulting from R&D funded with public subsidies10 and that resulting from private funding under the tax incentive plan.

When the funding comes from a public entity in the form of a subsidy, the funds will be subject to the administrative regulations governing the public grant process. If said regulations include provisions concerning entitlement to the R&D results, or limit the exercising of the resulting IPRs in Chile, these limitations would amount to contractual obligations between the public agency administering the grant and the grantee. These obligations may or may not

5. See article 20 of the Intellectual Property Act.6. See article 73 of the Intellectual Property Act.7. Under article 14 of the Intellectual Property Act, moral

rights are the Integrity right; paternity right; right to conclude an unfinished work; right to anonymity; and the right to remain unpublished.

8. See article 16 of the Intellectual Property Act.9. See for example articles 23 and 29 of the Intellectual Prop-

erty Act or article 19 bis of the Industrial Property Act.

10. It is worth noting that Chilean government rarely con-ducts R&D programs directly but rather subsidizes R&D projects which usually involve universities.

■ Juan Francisco Reyes,Sargent & Krahn, Senior Associate, Santiago, Chile E-mail: [email protected]

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be in line with the provisions concerning entitlement explained above. If not, the entitlement rules would not change, but obligations to one of the parties may arise and could lead to a different ownership scheme or a different exploitation scheme for the resulting IPR. If there is any regulatory provision which openly contradicts a legal provision in the Industrial Property Act or the Intellectual Property Act, the legal provi-sion will overrule the conflicting regulatory provision.

When the IPRs are obtained through R&D funded under the tax incentive plan, Law 20.241 (the Tax Incentive Plan Act) does not limit the conferring of rights over the resulting IPR to the funding party. The funding party may enter into a private agreement with the party receiving the funds to institute obligations to assign or license the IPR to the funding party. In such a case, however, we once again stumble into the provisions concerning entitlement which would not be modified by such an agreement, but would create contractual obligations on the receiving party to the funding party.

Unique situations arise when the beneficiary of the funding is a university. IPRs covered by the Indus-trial Property Act resulting from R&D conducted by university researchers belong to the university or to an appointee of the university. This right allows the university to validly determine that such rights will be owned by whomever it indicates. However, when the university has established its own Intellectual Prop-erty regulations expressly governing the ownership of its R&D results, it could face a situation where it has established some rights in favor of its researchers under the Intellectual Property regulations and has at the same time committed some rights to a third

party by means of a JDA, case in which there could be two valid agreements with potentially conflicting provisions concerning entitlement. While in practice this is something unlikely to happen, how would this situation be resolved? In principle, the IPR would belong to the party who is recorded before the INAPI as the assignee. If none exists, the earlier assignee should prevail if the assignment of specific IPRs has been made. In view of this potential conflict, it is wise to address this situation in any JDA entered into with a university.

Notwithstanding the above, if the resulting IPR is covered by the Intellectual Property Act, unless the IPR was software11 or the university was a public university,12 entitlement will rest on the author and thus it will not be possible for the university to as-sign the resulting IPRs to the funding party directly. Accordingly, it is advisable to include provisions in an agreement with a university compelling it to execute addenda to its employees’ contracts to ensure its researchers will record and assign their IPRs to the funding party.Conclusion

Questions of entitlement to IPRs are central to any agreement entered into by an Owner and a Licensee, and must be addressed before entering into such an agreement. These questions are often overlooked and, if wrongly handled, may result in undesired ef-fects which should be weighed by Licensees entering into long-term agreements involving third party IPRs or by potential Owners entering into JDAs or fund-ing R&D projects run by third parties. Hopefully, this reading has shed some light on the matter. ■

11. Case in which article 8 of the Intellectual Property Law would apply.

12. Case in which article 88 of the Intellectual Property Law would apply.

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IP In The Czech Republic

Joint Ownership Of IP In The Czech RepublicBy Vojtěch Chloupek

he romantic notion of an author or inventor as an individual is often remote from today’s practice. Although collaborative creation of

intellectual property (“IP”) items is known from the past, Shakespeare being a popular but by far not the only example, today, joint creation of IP is becoming standard, especially in certain industries where pat-ents or copyright works come into play. The aim of this article is to outline the rules applicable to joint ownership of IP in the Czech Republic and highlight the questions they raise and problems they pose. This article focuses primarily on copyright and patents but similar rules would apply also to other types of IP.Joint Ownership of Copyright

The first owner of copyright under Czech law (or rather the person exercising rights to a copyrighted work, as the term ownership is not used by the Czech Copyright Act1) is, in general, the author of the work. Therefore, when talking about joint ownership of copyright it is necessary to consider the question of authorship first. Even more so, tak-ing into account that copyright is non-transferable under Czech law, joint authorship together with inheritance are in fact the only means of creating joint ownership of copyright.

The Copyright Act defines “author” as an individual who creates a copyrightable work. In other words, that is a person who contributes the required level of creativity and individual distinctiveness. When the work is created by a joint creative activity of two or more persons, they are regarded as joint authors. Distinguishing between the contributions of the indi-vidual joint authors, is not an obstacle, as long as the individual parts are incapable of independent use. In practice though, it may be very difficult to establish whether a contribution, for example a guitar solo in a musical work, is capable of independent use, but generally speaking a text book with separate chapters on patents and copyright written by different authors would not create joint authorship under Czech law. All contributions must be made before the joint

work is created, otherwise rules for adaptation of a work would apply. It should also be mentioned that the creative activity of joint authors should be of the same kind—otherwise their work will be protected by two separate copyrights (one for a literary work and one for a graphic work, for example).

The Act further clarifies that contributions consist-ing merely in assisting in an administrative or technical nature, in providing documenta-tion or other materi-als, or in giving an incentive for the cre-ation of the work are not sufficient for the establishment of joint authorship. However, it seems that also a relatively small contribution, even few words in a literary work, may lead to joint authorship, as long as the contribution is creative, which seems to be in line with the approach of the Court of Justice of the European Union to originality.2

By default, Czech law gives joint authors a right to jointly exercise copyright in their work. Decisions on the exercise of copyright must be taken unanimously by all joint owners, regardless of the extent of their contributions to the creation of the work. And that applies not only to licensing of the work, but also to the use of the work by individual joint authors themselves. Therefore, if a single joint owner wants to exercise one of the exclusive acts protected by copyright and such use is not covered by a statutory exception or limitation, consent of the other joint owners is necessary. Nonetheless, if one of the joint owners would obstruct the exploitation of the work without a significant reason, the others may seek a substitution of his or her consent by a court. Although it is not obvious from the wording of the Copyright Act and there is no relevant case law, legal commen-

T

2. See for example Case C 5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-06569.

3. Ivo Telec and Pavel Tuma, Copyright Act (C.H. Beck 2007), 121.

1. Act No. 121/2000 Coll., on Copyright and Rights Related to Copyright and on Amendment to Certain Acts, as amended (“Copyright Act”).

■ Vojtěch Chloupek, Bird & Bird LLP, Senior European Consultant/Head of Czech & Slovak IP Practice, Prague, Czech Republic E-mail: [email protected]

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taries suggest that consent of more than just one joint owner can be substituted in this way as well in exceptional circumstances.3

Any act taken with respect to a joint work without consent of all joint owners is null and void, irrespec-tive of good faith of the third parties concerned. Therefore, when entering into a licence contract as a licensee, it is advisable to ascertain whether the copy-righted work in question is subject to joint ownership, and if so, whether consent of all persons contributing to its creation has been given. This problem does not occur in a situation when all joint authors are employed by the same employer and the work was created in course of their employment because then the rights would be exercised (not owned!) by the employer. Nevertheless, even in the case of employee works, problems cannot be completely ruled out as employees of different companies, universities or public organisations may cooperate on the creation of a single copyrighted work. And given the variety of complex R&D projects that arise more and more often, such a scenario is no longer rare. For that situ-ation, Czech law recognizes a concept of a collective work whereby the copyright is exercised (not owned) by a person who initiates and leads the whole project, on the condition that neither individual contribution to the work is capable of independent use.

Notwithstanding what was said above, each joint author may enforce rights to the joint work indi-vidually, without the need to obtain consent of the remaining joint authors. In such a case, each joint author may claim unpaid licence fee or damages in the case of copyright infringement in the amount as if the whole copyright has been concerned. However, such joint owner is then obliged to account to the other joint authors according to their shares. In this regard, the Copyright Act stipulates that the shares in a joint work are construed according to the extent of the creative contributions to the creation of the work of the individual joint authors, unless there is another agreement. Because it may be complicated to objectively determine the extent of a creative contribution, to avoid any future disputes it is recom-mended to regulate this issue contractually before the actual creation of a joint work is approached. Only in a situation when the individual contributions are not distinguishable and there is no other agreement, the Act provides that the shares are equal.

Unlike in the case of patents, which are discussed below, it is not possible to dispose of the individual contributions in the joint work, only of the joint work as a whole. Nonetheless, individual contributions are

subject to inheritance and do not pass to the remain-ing authors upon the death of one of them.Joint Ownership of Patents

Similarly to copyright, a discussion on joint owner-ship of patents must begin with the question of joint inventorship. The Czech Patents Act stipulates that the inventor is the person who made an invention by his or her own creative work.4 Joint inventors are entitled to a patent according to the extent of their contributions—a rule that arguably cannot be con-tracted out according to legal commentaries. Unlike the Copyright Act, which provides some advice on what is the right kind of contribution, the Patents Act is silent on this issue. While mere advice cannot lead to joint authorship due to the idea-expression dichotomy, in patent law, contribution of a mere idea would be sufficient. It is, however, less clear whether such an idea has to concern the whole inventive concept or if an advice on an individual aspect of the invention would also be enough. As shares in a joint invention are based on the extent of the contributions, it seems a contribution regarding only some features of the invention would lead to joint invention as well, as long as it is creative.

Joint ownership of patents is governed by general provisions on joint ownership in the Civil Code5 with few important exceptions resulting from the Patents Act. The first such divergence from the general rules is that each joint owner of a patent is entitled to use it in its full extent without the need of obtaining consent or compensating the other joint owners. Therefore, each of the joint owners can manufacture, sell or import the patented product. The same also applies to joint owners whose contribution to the invention, and therefore the share in the patent, is relatively small. The joint inventors should bear this in mind and if desired, regulate the use of the joint patent contractually.

Another important difference from the Civil Code is that consent of all joint owners is necessary in order to grant a licence or transfer a patent. While in the case of a licence the joint owners may agree that consent of only some of them is sufficient, unanimous agreement is obligatory when it comes to transfers. However, unlike in the case of copyright, it is also possible to transfer individual shares in the patent.

4. Act No. 527/1990 Coll., on Inventions and Rationalisation Proposals, as amended (“Patents Act”).

5. Act No. 40/1964 Coll., the Civil Code, as amended (“Civil Code”).

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To protect the interests of the other joint owners, the share may be transferred to third parties only if the remaining joint owners are not interested in acquiring it themselves. If the joint owners would not reach agreement on who shall acquire the share, they can buy it proportionally according to the size of their shares. What is identical to copyright is that each joint owner of a patent can claim royalties or suit for infringement, as long as he or she accounts to the other owners.

When compared to copyright, where no formalities are required, inventions generally raise a number of other questions which the joint owners need to agree on, such as, whether to apply for a patent and in which countries, who should bear the costs connected with filing of a patent application or who should be responsible for maintenance of the patent.

With regards to the decision on whether to apply for a patent, it is important to note that the registry office does not examine whether there have been more inventors of an applied invention, but only

whether the conditions on patentability are met. Therefore, the patent may be granted even if one of the joint inventors applies for it without authorisa-tion of the others. In such case, the remaining joint inventors cannot apply for an equivalent patent or claim invalidity but only claim a share in the patent. Similarly, each of the joint owners is entitled to do acts relating to the administration of the patent and its maintenance. Any costs incurred can be however accounted to the other joint owners.Conclusion

Despite that joint creation of copyright works and inventions are becoming increasingly popular, it is not without problems from the legal perspective. Case law on joint IP ownership is almost non-existent in the Czech Republic and, as seen above, statutory law may be seen as too complex and may not always correspond to practical needs of real life situations. With that in mind, it is crucially important to be extra cautious and diligent when contracting either for development of IP or licensing deals in particular. ■

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IP Ownership In Germany

Joint Intellectual Property Ownership In GermanyBy Peter K. Hess and Michael Kobler

I. Introductionnder German law, there is no uniform statu-tory rule regarding joint ownership of Intel-lectual Property (IP) rights. Article 8 of the

German Copyright Act (UrhG) addresses this issue in some detail, whereas in the case of patents, trade-marks and other industrial property rights, the related provisions are restricted to simply acknowledging the mere possibility of joint ownerships, leaving open details and legal consequences.

Subsequently, for example, a team of inventors from university and industry in a cooperative R&D project,1 or a group of brand designers face the dif-ficulty of how to manage and enforce their joint IP rights. Moreover, joint ownership of IP rights can result not only from a joint creative process (a priori), but also from various forms of legal succession (a posteriori), e.g. a community of heirs.

In the case of joint Industrial Property Rights, because of the lack of specific provisions, the prin-ciples of general German civil law apply. Except as otherwise agreed upon, joint owners are regarded as a community of part-owners by defined shares (Bruch-teilsgemeinschaft) pursuant to Sections 741 et seq. of the German Civil Code (BGB). But these provisions constitute not much more than a broad framework that has to be filled according to the specific needs and demands of the owners involved. The best way to do this is by a contract addressing the major issues outlined in the following sections.II. Copyright Law: Article 8 UrhG

As already mentioned, German Copyright Law contains a specific provision regarding joint owner-ship. This has a strong practical relevance, keeping in mind that in Germany software is protected under copyright law, and that in this area joint creations are the rule rather than the exception.

Article 8 UrhG provides for an “association of its own kind,” mixing aspects of joint ownership with

the fundamental principle of strong author’s person-ality rights in copyright law. The copyright is tightly connected to its author or, in this case, community of authors; hence it is not possible to terminate the association prior to the end of the copyright itself.2 Also, the individual share of each co-author cannot be sold or otherwise be assigned. This relates to the general legal preclusion of assignment of the copy-right in Article 29 UrhG.

Pursuant to Article 8 para. 2 UrhG, publishing and exploitation of the protected work requires the consent of all co-owners. This includes individual pub-lishing and licensing of the work. Still an individual co-owner must not withhold his consent in bad faith.3

The revenues from the exploitation of the pro-tected work are distributed according to the respec-tive extent of contribution, except otherwise agreed upon, pursuant to Article 8 para. 3 UrhG. So the provision expressly leaves room for stipulation by the part-owners. Such stipulation is strongly recom-mended seeing that it is generally quite arduous to assess the respective contributions to a jointly created work in retrospect.III. Patents, Trademarks and Other Indus-trial Property Rights: Application of Prin-ciples of General Civil Law (Community of Part-Owners)

Article 6 sentence 2 of the German Patent Act stipulates that if several people have jointly made an invention, the right to the patent is held by the co-inventors collectively. The details and legal consequences of this are not provided for, similarly for utility models4 and industrial design models (Article 7 para. 1 sentence 2 Designs Act (GeschMG)). German trademark law does not have a corresponding stipulation.

Because of the absence of specific regulations in

U

1. According to the Federal Statistical Office in 2010, Ger-man universities have attracted external funding in the amount of 5,9 Billion Euro (+ 10, 5 % compared to 2009).

2. The copyright automatically ends 70 years after the au-thor’s death, Article 64 UrhG.

3. Wandtke/Bullinger-Thum, Urheberrecht, Article 8, marginal number 33, with further references.

4. Article 13 para. 3 of the German Utility Patent Act (Ge-brMG) refers to Article 6 sentence 2 of the German Patent Act.

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IP law, the provisions of the general civil law on per-sonal associations applies, specifically Sections 741 et seq. BGB. These regulations provide for a relatively loose connection of part-owners having broad right to exploit the joint property. The members of this personal association by law principally share a com-mon interest, i.e. the interest of exploiting the joint property, but not any additional common purpose, a typical example being a community of owners of a house. It is apparent that the applicability of principles of general civil law gives a lot of leeway for the courts for applying the law on cases of joint ownership of IP rights.IV. Selected Issues1. Use by Part-Owners

Article 743 para. 2 BGB stipulates the right of each part-owner to use the joint object to the extent that joint use by other part-owners is not impaired. So, when does the use of an individual part-owner “impair” the joint use by the others? In patent law, courts have generally deemed producing and selling of patented goods by individual part-owners to be free, as well as applying patented processes.5

The current situation in trademark law is not so clear, especially when considering the key function of this IP right, which is to protect against likelihood of confusion. If several part-owners use the trademark on their respective products in parallel, consumers will most likely assume that these goods come from a common origin and won’t be able to differentiate between individual makers. On top of that, part-owners could gain unjust profit from other part-owners’ marketing efforts and achievements. This is why parallel use of part-owners of jointly owned trademarks seems to be contradictory to the nature of the IP right itself and should be considered “an impairment” in the described sense.6 2. Licenses by Part-Owners

As far as the granting of licenses by joint patent owners is concerned, it is recognized that this re-quires the consent of the part-owners. Immediately, the question of quorum arises: How many votes are necessary to grant a license to outside parties? The prevailing opinion in legal commentaries is that all part-owners need to consent to the collective licens-

ing decision.7 However it is controversial, whether the majority of part-owner can force the minority to agree to the license via internal vote.

The other question refers to a part-owners right to use: Is it possible to assign this individual right to use to another person? Aside from the doctrinal problem of where to allocate this quasi-licensing of IP right shares, many commentaries agree that such assignment is admissible even without the consent of the other part-owners.8 Still, there is no case law on this question, as there is no comparable discussion in trademark law and design law.3. No Financial Compensation

Deciding about a case of one-sided individual use of the patent in 2005, the German Fed-eral Court of Justice has denied the other part-owners financial compensation.9 In its opinion, a permitted use of the joint patent pursuant to Article 743 para. 2 BGB does not, in principle, implicate a pay-ment of a prorata share to other part-owners, in order to compensate them for their lack of own use.

However, the Court has shown an alternative path to compensatory payment: Article 745 para. 2 of the civil code entitles each part-owner to demand administration corresponding to the interests of all part-owners according to their reasonably exercised discretion. This is generally regarded as a statutory claim, but the Federal Court of Justice suggests that it might also be suitable as grounds for a compensa-tory claim.10

Royalties generated from a (collective) license are distributed among the part-owners, equally in case of doubt, pursuant to Articles 742, 743 para. 1 BGB.

5. BGH GRUR 2005, 663, 664; Kraßer, Patentrecht, § 19, V. b) 6., with further references.

6. Haedicke in GRUR 2007, 23, 27 et seq.; in Design law, this issue has not been addressed yet.

7. Kraßer, Patentrecht, § 19, V. b) 9., with further references.8. Henke in GRUR 2007, 89, 95, with reference to BGH

GRUR 2005, 663—Gummielastische Masse II.9. BGH GRUR 2005, 663—Gummielastische Masse II.10. The problem with this approach being that Article 745

para. 2 BGB has a comparatively vague wording and thus needs to be specified by legal commentators and case law in order to provide a valid basis for compensatory claims, as Henke in GRUR 2007, 89, 92 et seq. points out.

■ Peter K. Hess, Bardehle Pagenberg, Partner, Munich, Germany E-mail: [email protected]

■ Michael Kobler, Bardehle Pagenberg, Associate,Munich, GermanyE-mail: [email protected]

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4. Free AssignabilityPursuant to Article 747 sentence 1 BGB, the

individual shares in a community of patent owners are freely assignable, both to other part-owners and third parties. This also applies to communities of part-owners of trademarks and design models.

In this aspect, the law is very clear. However, there are still some issues that should be addressed in a partnership agreement. For example, the free as-signing of shares can lead to investments becoming frustrated that rely on the constancy of the ownership community,11 so the part-owners could agree that as-signment requires consent by the others. Also, the law does not contain a general pre-emption right for the other part-owners, and in some cases this might be a sensible solution.

It should also be mentioned in this context, that Article 747 sentence 1 BGB that the right to assign also includes the right to waiver ownership of the individual share.V. Need for Stipulations

Article 8 UrhG addresses the questions of joint copyright ownership in a comparatively detailed manner. And still there is room for stipulations, like the distribution of royalties. The corresponding pro-visions for patents, trademarks, design models and other industrial property rights in general civil law are fairly vague. But the upside is that, because of this, the parties have a broad freedom of contract. Issues that should be discussed and be agreed upon in the agreement/contract are:

a) What is the legal nature of the association?—General civil law provides for community of part-owners, but in some cases the rules for private partnership (BGB-Gesellschaft) can be more fit-ting. For example, individual shares in a private partnership are not freely assignable. Therefore, this type of association is more stable than a com-munity of part-owners.12 b) What are the respective shares of the part-owners?—In case of doubt the law provides for equal shares, pursuant to Article 742 BGB, which might be unjust and unwanted. The determination of shares is very important, because annual fees (for patents) and other costs, but also revenues are divided based on shares.

c) Do individual part-owners have an individual right to exploit? If yes, to what extent?—As shown, especially with trademarks, it has not been decided whether individual part-owners are allowed to use the joint right. A provision should also include how revenues are distributed between the part-owners.d) Do individual part-owners have a right to license their share? What are the prerequisites for a col-lective license?—A stipulation on the granting of licenses should address the scope of license and distribution of license fees.e) What are the conditions for and consequences of assignment of individual shares? Assignability cannot be precluded in a community of part-own-ers. So in order to protect potential investments, the partners should agree on terms to handle this case, for example a pre-emption right for the other part-owners.f) When does the association end? What happens in this case?—Except otherwise agreed, pursuant to Article 749 BGB an individual demand for ter-mination—without need for grounds—results in a sale of the joint right.13 This is why, in particular, the conditions for termination of the community should be fixed, as well as what happens with the IP right. Will it be sold? Or can one of the part-owners take it over from the community?

VI. ConclusionThe preceding paragraphs have shown the im-

portance to take advantage of the given freedom of contract. This is particularly so with trademarks—as a relatively new IP right, there is no case law that allows predictions on court decisions in cases of conflict.

When the regulations for the community of part-owners were made, German legislature did not have in mind joint ownership of IP rights.14 There-fore, these rules have to be adapted, in respect to the ubiquitary and immaterial nature of IP; in the same manner as Article 8 UrhG has been passed, because the law on the community of part-owners didn’t address the specific needs of IP right owners as well as the strong connection between authors and their work. ■

13. The German Federal Court of Justice regards this right as an important bargaining chip for weaker part-owners when negotiating for compensation, BGH GRUR 2005, 663, 664—Gummielastische Masse II.

14. Kraßer § 19 V. b) 2.11. AIPPI, Report Q194 (Germany), Question I.5, p. 5.12. Kraßer, Patentrecht, § 19, V. c) 3.

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IP Ownership In India

Some Insights Into Joint Intellectual Property (IP) Ownership In India1

By Sudhir Ravindran and Subramaniam Vutha

1. Background his article looks at joint ownership of IPR in India, against a backdrop of a growing, net-worked economy, greater sophistication in

business models, and increased interdependencies in business operations.

There is now a greater propensity to outsource, collaborate, partner and engage in joint ventures. This raises interesting issues of IPR allocation as between businesses and their partners, vendors, collaborators and customers. In India, joint owner-ship of IPR is often seen as a “win-win” option. This article highlights the options and pitfalls related to such joint ownership. 2. Why Increasing Joint Ownership of IPR?

Here are the main factors that have made the concept of joint ownership of IPR increasingly sig-nificant in India, arising from increased outsourcing, collaboration, partnering and networked operations.a. The Networked Structures of Most Large Businesses:

Many Indian businesses are “networked” in their operations; so a product or a service could flow from the combined innovation of more than one entity. Earlier, only large companies worked this way, calling upon “ancillary” industries for components and spares. But, today, this is true even of medium size businesses and several small ones. There are three main reasons for such increased networking of business operations:

i. The growing complexity of products and services in an increasingly sophisticated economy.ii. The significant disparities in labor costs in dif-ferent parts of the country and the special tax and regulatory benefits to small scale businesses.iii. Improved infrastructure—many more airports, more railway lines, many more roads, vastly im-proved telecommunication and, most importantly, avid adoption of the Internet and mobile telephony.

b. The Close Links With Vendors, Partners, Clients and Affiliates, Often With Cross Holdings

Business in India, more so perhaps than in western

countries, emphasizes relationships over transactions. Also, most business groups expand into adjacent [or even unrelated] business sectors. It is common for such “group” companies to collaborate with or outsource to each other. Joint ownership of IPR is thus seen as an easy way to acknowledge and foster existing relationships.c. Indian Attitudes Towards Sharing:

Taking a hard stance on transactions is seen as detrimental to rela-tionships. With regard to allocation of IPR, therefore, joint owner-ship is often seen as a quick and easy solution, favoring both parties. 3. The Concept of Joint Ownership

Joint ownership of intellectual property [IP] is a rapidly developing, not [often] fully understood concept, generally born out of collaboration. When an IP asset is developed in collaboration it sometimes becomes difficult to identify the respective contribu-tions of each person in developing the same. The quality or quantum of contribution rendered by each person need not be equal, but it must be of such nature that without even one of the contributions the end product cannot be obtained. With more and more companies and organizations opting for collab-orative invention and strategic alliances, determining the ownership of such IP becomes a difficult task. To many collaborating parties in India, the only logical and plausible solution comes in the form of ‘Joint Ownership’ by all the contributing parties.

Typically, joint ownership arises where an IP right comes into existence by the efforts of two or more persons. In general, it refers to a right in the form of undivided shares. Joint ownership can also be the result of an assignment of IP rights to two or more persons. Each joint owner may also have the right to assign her share to a third party; this party will then replace the former joint owner with respect to her interest.

T

1. The authors acknowledge the inputs of Ms. V. Filma, Legal Counsel, Altacit Global, India.

■ Sudhir Ravindran,Altacit Global, Advocat/Solicitor, Chennai, IndiaE-mail: [email protected]

■ Subramaniam Vutha,Subramaniam Vutha & Associates, Advocat/Solicitor, Mumbai, IndiaE-mail: [email protected]

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4. Intellectual Property Ownership In Co-Ownership Agreements

It is important that IP ownership is agreed upon in a co-ownership agreement before any significant work takes place, although this is sometimes not possible. A large Indian company will typically seek to own all IPs relevant to their business especially when the company pays for product development or external research and innovation. In such cases, the company may also agree to manage the filing of any applications at the IP Office and to maintain any granted IPs at its own expense. Though the joint owners may conclude a Joint Ownership agreement at any time, at the very least, IP ownership should be discussed and allocation of IPR agreed upon before any significant sums of money have been expended on the registration process.

If the parties are willing to be joint owners of IP resulting from their collaboration, they should define clearly the subject matter that is to be jointly owned. This may appear simple, but is sometimes the source of contention. Co-ownership requires detailed draft-ing of legal documents to avoid pitfalls. The legal relationships between the parties are put down in the form of an agreement setting out the respective rights, obligations and potential liabilities. Such rights may include the right of assignment. If such agree-ment is absent, however, their relationship will be shaped by statutory provisions.5. Basic Implications of Joint Ownership Under Indian IP Laws

Generally speaking under Indian intellectual prop-erty laws, all types of protected subject matter can be owned jointly.2 The rights conferred by joint owner-ship may be overridden by a contract between the parties concerned. In the absence of a contract, the statutes will govern; but that may result in serious unintended consequences. Therefore, joint owner-ship should be carefully considered and structured.6. Joint Ownership Under Indian Patent Law

Joint ownership of a patent may arise from joint invention or from assignment. Such rights may also flow from an order of the Controller under section 20 of the Patents Act, 1970, where the Controller is satis-fied upon consideration of a claim in the prescribed form by a claimant, [before a patent is granted] that the claimant is entitled to an undivided interest in the patent, by virtue of any assignment or agreement

in writing or by operation of law.Section 50 (1) of the Patents Act, 1970 provides

that each of the joint owners, in the absence of an agreement to the contrary, has an equal undivided share in the patent. Section 50 (2) further provides that the joint proprietor of a patent cannot lawfully grant a licence or assign her share in the patent except with the consent of the other person or persons.3

Where a joint owner of a patent desires to sell his interest in the patent or grant a licence to any person, he may make an application to the Controller who may after giving an opportunity of being heard to all the other persons registered as grantees or proprietors of the patent, issue appropriate directions consistent with the terms of any agreement between the co-owners, for the sale, lease or grant of licence [Sec. 51].4

There are several reasons why joint ownership should be carefully structured and documented. For example, under Section 20 (5) of the Patents Act, 1970, If any dispute arises between joint applicants for a patent whether or in what manner the applica-tion should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require. This would not be the case where an agreement between the joint own-ers provided for the manner in which the application should be proceeded with or empowered one of the joint applicants to determine such matters. 7. Joint Ownership Under Indian Trade Mark Law

Section 18 of The Trade Marks Act, 1999, recog-nizes the right of the two or more persons to file applications jointly.

Section 24 of the Act provides that two or more persons who use or propose to use a trade mark in-dependently cannot apply for registration of a mark as joint proprietors. It also specifies the conditions, subject to which, two or more applicants may be registered as joint proprietors of the trade mark. In such a case, the applicants will be required to agree to the condition that the mark shall be used on behalf of all of them or that the mark shall be used only

2. Section 24 of The Trade Marks Act, 1999. 3. https://www.aippi.org/download/commitees/194/GR194in-

dia.pdf Last visited on 27th June, 2012. 4. Ibid.

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in relation to an article or service connected in the course of trade with all of them.

Each person registered as joint proprietor of a trade mark shall be vested with the rights to use the trade mark as if those rights had been vested in a single person. Since each of the proprietors has, by virtue of the registration, an exclusive right to use the mark subject to certain conditions, it follows that any one of the proprietors could in his individual capacity sue for infringement.

There are many instances in Indian businesses where joint owners, regulate themselves and their use of the jointly owned trademarks via an agreement and companies which share the same trade mark, regulate their use via a separately created Trade Mark Holding company.8. Joint Ownership Under Copyright Law

The concept of Joint Ownership is also recognized in Indian Copyright law. The statutory scheme under the copyright law is similar to that under the patent law. The Indian Copyright Act, 1957, provides for Joint Ownership and sets out rights and obligations of the joint owners. The Act enables two or more owners to jointly apply for copyright registration as the Joint owners. However, joint owners of a copyright cannot exploit the copyright individually. No joint owner can assign, transfer, license or sub-license or in any other manner use the copyright without the consent of the other joint owners.5

Licensing copyright from joint owners always presents serious challenges as it is always difficult to determine who owns what in the work. Besides, the potential licensee has to obtain license from all the joint owners of such work. In the case of Angath Arts Private Limited V. Century Communications Ltd. and Anr.,6 the High Court of Bombay held that the ‘Joint owner of a copyright cannot, without the consent of the other joint owner, grant a license or interest in the copyright to a third party.’

In Nav Sahitya Prakash V. Anand Kumar,7 the High Court of Bombay followed the decision of the Chan-cery Division in Powel v. Head reported in 1879 12 Ch.D 686, and held that a joint owner of a copyright cannot, without the consent of the other joint owner, grant a license or interest in the copyright. If a license is granted by one joint owner without the consent of the other, it does not bind the former and the other joint owner can sue the licensee for infringement.

Further, each joint owner of a copyright is entitled to the remedies provided by the Act. Each of the joint owners to the extent of his interest can individually enforce the right by means of any suit, action or other proceeding without making the owner of any other right a party to such suit, action or proceeding.8

Further one owner of a copyright cannot block an-other owner of that copyright from suing for infringe-ment by simply refusing to join in the suit. Although no joint owner of a copyright can grant an exclusive license with respect to her proportional share in any work without the consent of all the other owners of the copyright in that work, copyright owners may unilaterally grant nonexclusive licenses.9. Joint Ownership Under Designs Law

Section 8(1) of the Designs Act, 2000 provides that the application shall proceed in the name of the joint applicant or applicants provided the claim to an undivided share of the design has satisfactorily been established and the consent of other joint ap-plicant or applicants obtained. It follows that each of the joint owners, in the absence of an agreement to the contrary, has an equal undivided share in the copyright in the design. 9

10. Some Perils of Joint OwnershipIntellectual property needs to be exploited in a

timely manner in order that commercial benefits ac-crue to its owner. Such timeliness is particularly criti-cal in relation to patents and designs, since their term of protection is only for a limited period time. Any disputes in the commercialization of IP assets could lead to revenue losses which cannot be recouped at a later point of time. Collaborative creativity which gives birth to intellectual property and joint owner-ship of the same should not be marred by disputes which could prevent their exploitation.

Intellectual property, owing to its intangible na-ture, may be often used simultaneously in multiple jurisdictions. The joint ownership of intellectual property would then be governed by different rules and laws that emanate from such multi jurisdictional use, which could potentially conflict with each other.

To reduce the risks attendant upon joint ownership, joint owners should consider and put in place systems to address issues relating to inheritance, accrual of revenue, implication of joint ownership in multiple jurisdictions and conflicts in law, assignment and transfer of ownership. ■

5. http://copyright.lawmatters.in/2009/09/joint-ownership-and-copyright-licences.html. Last visited on 26th June, 2012.

6. 2008(3)ARBLR197(Bom) | 2008(4)BomCR838.7. AIR 1981 All 2000.

8. Section 56 of the Copyright Act, 1957.9. https://www.aippi.org/download/commitees/194/GR194in-

dia.pdf. Last visited on 27th June, 2012.

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Ownership Rights In Israel

Joint Ownership Rights In IsraelBy Neil Wilkof and Adar Ortal

n order to gain an appreciation of the treatment of joint ownership rights in Israel, it is important to understand both the special environment in

Israel within which jointly owned intellectual property rights are created as well as the legal context that governs joint ownership rights under Israel law. This leads to an interesting disjunction in Israel between the view of joint ownership taken by lawyers and the position often preferred by their clients, with the for-mer tending to counsel against joint ownership unless absolutely necessary and the latter frequently show-ing a willingness to enter into such arrangements.

As well-described by Senor and Singer,1 Israel is a world-class hotbed of technology and innovation. Only the United States and China have more com-panies listed on the NASDAQ exchange, with over 60 companies so listed, this from a country of only approximately eight million residents.2 There are two main aspects to this innovation activity in Israel. First, there are a large number of start-ups, typically founded by one or a small number of youthful entre-preneurs and funded by either domestic or foreign investors. The research and development activities of these start-ups tend to remain solely based in Israel, even if the marketing function and perhaps, even overall management, migrates abroad, particularly to the United States. The preferred goal of most of these small start-ups is to achieve a lucrative “exit,” either through acquisition by a foreign company or the flotation of the company’s shares on a foreign stock exchange. Licensing out the company’s intellectual property rights is less likely to occur.

From the point of intellectual property, this start-up ecosystem has several implications for employee mobility and ownership of intellectual property rights: (i) there is a high degree of employee mobility between such start-ups; and (ii) such mobility means that the employees may well take with them not only generalized skills but more specific knowledge gained at the employee’s previous employer. From the legal vantage, this means, at the least, that the

hoped-for exit will require particular attention to the issue of whether the company may unwittingly be merely a joint owner of the company’s intellectual property rights.

In a variation of this theme, a large multinational may seek to establish an R&D center in Israel, either by way of acquisition of an existing Israeli company or by the creation, de novo, of the R&D facility in Israel. In either circumstance, the R&D activities in Israel will more likely be integrated within the larger multi-national, leading, in some instances, to cross-border collaboration and the creation of intellec-tual property rights within the more broadly-defined company. Here, the focus of joint ownership will not likely be driven by concern about a potential sale or other acquisition of the Israeli-based entity. Rather, interest will be about understanding the joint owner-ship of intellectual property rights for the company’s internal purposes, including as part of the company’s patent filing program. It is against this backdrop that the legal framework for regulating joint ownership of intellectual property rights must be understood.Legal Framework

The scope of the statutory treatment for joint ownership of intellectual property rights differs, depending upon the particular legal right at issue. The most extensive statutory treatment is set out in the Patents Law, 5727-1967. The framework here is to provide statutory default provisions regarding various key aspects of joint ownership, together with an explicit right given to the parties to override any of these statutory provisions by a written agreement.

Under the Patents Law, an invention or patent may be jointly owned.3 Each of the joint owners is deemed to own an equal share in the rights, unless there is a written agreement between the parties to the contrary or the law dictates a different result.4 With respect to exploitation of each owner’s rights in the patent, the Patents Law distinguishes between the right of exploitation by each joint owner directly and the right of a joint owner to authorize a third party to exploit the license. With respect to the right of exploitation of each joint owner, the Patents Law

I

1. Start-up Nation: The Story of Israel’s Economic Miracle, Council of Foreign Relations, 2010.

2. Lazaroff, “China to Capitalize on NASDAQ Jump with Tech IPOs, BNY says,” Bloomberg, May 7, 2012. 3. Patents Law, 5727-1967, §77(a).

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provides that each of them is permitted to exploit the patent “in a reasonable manner.”5 Moreover, each of the joint owners may transfer and assign his share of ownership in the patent without the consent of the other joint owners.6 One substantial limitation regarding the right of

each joint owner to exploit the invention is that—“[i]f a said exploitation prevents such exploitation by another partner, then the partners have the option of demanding from the exploiting partner appropriate royalties or their share of the profits derived by him.”7

It is uncertain the extent to which joint owner of a patent in Israel have exercised their rights under this provision.

With respect to the right of the joint owner to grant a license to a third party to exploit the patent, the legal position is different. Under the Patents Law, “[a] license to exploit a jointly owned patent shall only be granted with the consent of all the partners.”8 The presumed rationale for this provision is that the licensee should not be expected to personally verify that all of the joint owners have given their consent. The onus is on the joint owner entering into the li-cence agreement to make certain that there is consent by all of the other joint owners.

Relying on the doctrine of “good faith” under the Israel Contracts (General Part) Law, 1973, the mag-istrate’s court recently held that when the defendant undertook to apply for patent applications jointly, but failed to notify the plaintiff that the applications had been abandoned, a breach of contract had occurred. It is noted that the defendant had been under an obliga-tion to pay the plaintiff certain royalties in connection with the patents.9 Notwithstanding the foregoing, the Patents Law grants the court broad authority to order one of the joint owners to take a specified step upon application to the court by another joint owner.10 No published decision was found where the court exercised its authority under this provision.

There has been only a small number of judgments that have clarified the rights and obligations of joint owners under the Patents Law. The most notable deci-sion was given by the Supreme Court in Rosenberg v. Rubinstein.11 There, the Court held that the provision in the Patents Law stating that a transfer or assign-ment of rights in a patent be in writing was merely evidentiary in nature. In this case, the Court gave ef-fect to an oral agreement to divide patent ownership equally in a company that the parties had created, where there was a later writing affirming this result as well as other corrobora-tive evidence. That said, we are not aware of any published decision that has recognized the creation of joint owner-ship in a patent solely based on an alleged oral agreement.

Trade Secrets—Un-like patents, there is no statutory treatment of joint ownership of trade secrets under Israel law. As a result, parties to an ar-rangement where the know-how or trade secrets are jointly owned will be able to rely only on the terms and conditions, regarding joint ownership of the trade secret, if any, reached by the parties. As such, the measures required by both parties to keep the trade secret confidential are crucial and they should be carefully negotiated.

There are virtually no judgments that have consid-ered the question of joint ownership of trade secrets. One notable exception arose in connection with a dispute regarding the treatment of improvements. In the case of Camifram-Israel Led. v. Bitum Petrochemi-

4. Patents Law, 5727-1967, §77(b).5. Patents Law, 5727-1967, §78.6. Patents Law, 5727-1967, §80. 7. Patents Law, 5727-1967, §88(a).8. See 2001 Kirtung Ltd. v. Izokal Structures Ltd, D.C.M. (TA)

019992/04) (2005), which upheld the rule that a joint owner may not grant a license, whether or exclusive or non-exclusive, without the permission of the other joint owners.

9. M.C.C. (T.A.) 42265/07, Dr. Shatz v. Aminach Ltd. (2012) (unpublished).

10. Section 81 provides as follows: “(a) On application by some of the partners to a patent, the Court may order the other partners to perform certain acts for the exploitation of the pat-ent or of any right therein, to grant a license for it, or on any other matter that concerns the patent, and the Court may au-thorize one of the applicants to perform the act in place of the respondents, all in accordance with the application and on such conditions as it may deem appropriate. (b) An order shall not be made under this section:

(1) if it is prejudicial to the rights or obligations of a trustee in bankruptcy, receiver, liquidator, administrator or executor of a will;

(2) if it contradicts one of the conditions of a written agree-ment between the partners to the patent.

11. C.A. 520/80, Rosenberg v. Rubinstein, P.D. 38(1) 85 (1984).

■ Neil Wilkof, Herzog, Fox & Neeman,Special IP Counsel,E-mail: [email protected]■ Adar Ortal,Herzog, Fox & Neeman,Associate IP Department,E-mail: [email protected]

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cal Industries Ltd.,12 the court held that the revised formula developed by the defendant did not belong to both parties but only to the defendant. The court reasoned that the revised formula developed by the defendant was significantly different from the formula provided by the plaintiff and that the plaintiff had not contributed anything to the revised sealant formula. In the absence of any agreement to the contrary, rights in the secret revised formula belonged only to the defendant.

Copyright—The legal treatment of joint ownership of works protected by copyright can be seen as lying between the approach taken under the Patents Law, on the one hand, and the absence of any explicit statu-tory treatment of the subject, such as trade secrets, on the other. Section 1 of the Copyright Law, 2007, defines a “joint work” as a “work created jointly by several authors, wherein it is not possible to discern each author’s contribution to the work.” However, the Copyright Law does not contain any further treat-ment of a “joint work.” As such, the parties are left to fashion the terms and conditions in the event of joint ownership or rely on the court’s decision.

Courts called upon to address the issue of joint ownership of a work under copyright can choose one of two routes in attempting to rule on the meaning of a “joint work” (and by logical extension, joint owners of a work) under the Copyright Law. One approach is to rely on other intellectual property statutes, most notably the Patents Law, by analogy to the copyright situation. The other approach is to anchor the issue of joint ownership of copyrights to general principles of contract and property law and to apply these prin-ciples to copyright. In the main, courts in Israel have opted for the second alternative. Three decisions are notable in this regard.

In the case of Sivan v. Sheffer (2003), the Supreme Court, in ruling on the question of ownership in a well-known Hebrew dictionary, held that a joint copyright owner may unilaterally rescind a contract entered into between the joint owners and a third party under a “reasonableness” test. However, the judges were split with respect to the extent to which a joint owner may rescind the contract, i.e. the whole contract or just the owner’s respective percentage.

One Justice relied on provisions of the Contracts (Remedies for Breach of Contract) Law, 1970 and the good faith provisions of the Contracts (General Part)

Law, 1973. She ruled that the right to rescind a con-tract is absolute, subject to the person’s duty to act in good faith. The other Justice ruled that each joint owner may cancel only his interest in the contract. In particular, he noted that this approach raises a legal question with respect to the joint owners’ rights to exploit the joint work and referred to the Land Law, 5729-1969, in this regard.

More recently (2011), the district court in Yifrach v. Kestner13 provided further guidance with respect to the use of the joint work by the joint owners and the extent to which one joint owner may exploit the joint work without prejudicing the rights of the other joint owners. The district court held that works that were created as part of the partnership are jointly owned by the ex-partners by virtue of the partnership agree-ment, even if the agreement did not explicitly refer to copyright. The court further held that each joint owner may reasonably use the joint work provided that such use does not inhibit the use of the work by the other joint owners. The test is one of reason-ableness, taken from the Land Law (which applies to personal property through section 9 of the Israel Movable Property Law, 5731-1971). That is to say, do the other joint owners object to such use, this against the backdrop of section 1(2) of the Copyright Law, 2007, which provides for the exclusive rights of the copyright owner as well as the general obligation of good faith under the Israel contract law.

In Kabli v. Rehes, (2011)—In Kabli, the district court ruled that a breach of a copyright assignment agreement by one of the joint owners entitles the non-breaching owner to relief only under the contract law. Thus, the non-breaching owner is not entitled to statutory damages under the copyright law. The district court also addressed the question of the extent of the right of use allowed by each of the joint owners and ruled that when the parties had an agreement with respect to the use of the joint work, the court will turn to the agreement before turning to section 31 of the Land Law, which applies to personal property through section 9 of the Israel Moveable Property Law, 5731-1971.

Trademarks—There is no explicit treatment of joint ownership of a mark under the Trademarks Or-dinance (New Version), 5732—1972. Indeed, for a long time, the position was held that joint ownership of a trademark was not legally possible, because joint ownership was not consistent with the principle that

12. D.C.C. (Hi) 400/01, Camifran-Israel Ltd. v. Bitum Petro-chemical Industries Ltd., (not published) (2008).

13. D.C.C. (Hi.) 728/07, Yifrach v. Kestner, (not published) (2011).

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a trademark is a source identifier. That restriction was removed by internal Registry practice, but otherwise, the issue of joint ownership of a mark has largely been left to the parties to resolve by means of contract.

Case law treatment of the subject of joint owner-ship of trademarks is sparse. In Barshefsky v. Zlutnik (2008), the district court ruled against the claim of infringement by one joint owner of a trademark against the other for use of the registered mark on products that, while covered by the specification, did not emanate from the original manufacturer. The court reasoned by analogy from section 46(b) of the Trademarks Ordinance that provides that “[w]here several persons are registered proprietors of the same (or substantially the same) trademark in respect of

the same goods, each of them shall have the same rights as if he were the sole registered proprietor of such trademark.” In the district court’s own words, “there can be no distinction between two similar registered trademarks and a jointly owned registered trademark.” Conclusion

The treatment of joint ownership of intellectual property rights in Israel derives from the unique mi-lieu in which innovation takes place in the country. There is no consistent treatment of the issue under the various intellectual property laws. As such, the joint owners of an intellectual property right are well-advised to make certain that they have contractually anchored their rights and duties in this regard. ■

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Joint Ownership In Malaysia

Joint Ownership Of Patents, Copyrights And Trademarks In MalaysiaBy Boo Seng Ong

his article sets out briefly the position in Ma-laysia in relation to joint ownership in patents, copyrights and trademarks, as well as illustrat-

ing some of the theoretical and practical problems, faced by joint owners of Intellectual Property under Malaysian laws. Patent

Under the Malaysian Patents Act 1983 (“the Patents Act”), if the right to obtain a patent is owned jointly, the patent may only be applied for jointly by all the joint owners.1 The Act also provides that, subject to any agreement to the contrary, joint owners may separately assign or transmit their rights in the patent application or patent, exploit the patented invention and take action against any third party for exploiting the patented invention without their consent, but may only jointly withdraw the patent application, surrender the patent or conclude a licence contract.2 This is similar to the position of co-owners of patents under the English common law.

The foremost issue that joint owners need to ad-dress at the outset is how ownership in the patented invention will be divided. Often the corporation funding the research would have a larger share in the patented invention by virtue of their financial investment. It is also important to agree on how roy-alties derived from the exploitation of the patented invention will be divided. Thereafter, it is prudent for parties to enter into an agreement with express and clear clauses outlining their respective rights, how their respective shares in the ownership of the patented invention can be transferred or assigned; for instance, a party who wishes to have control over the patented invention may want to include clauses which will give it the option or right of first refusal over the shares of the other joint owners to the patented invention, the division of royalties or income derived from the exploitation of the patents, etc.

In Malaysia, joint ownerships of patents are com-monly found in cases where research institutes or universities with research and development facilities collaborate with corporations who seek to com-

mercialise and exploit the patented invention. In such cases, often there exists a tension between researchers or universities who are keen to pub-lish or announce the results of their works to gain recognition or for advancement in a particular field and the corporations who would like to file patents for the inventions resulting from the research and development.

Prior disclosure of relevant research data, find-ings or results may block subsequent patent appli-cations. In Malaysia, a patent is granted only if it is new and involves an inventive step.3 Inventions which are anticipated by prior arts are not new and hence, not patentable. Therefore, it is important that disclosure or publication of research data or results must be controlled and at the same time, there must be recognition that researchers/univer-sities’ need to publish.

Further, the joint owners should also try to de-cide, at the outset, who owns the resulting work or developments/advancements arising from the jointly owned patented works.

Although the Patents Act allows a co-owner to ex-ploit the patent separately, there are no provisions as to how royalties or fees received from the exploitation of the patent are to be divided amongst co-owners.

It is therefore recommended that co-owners should agree on licensing, exploitation and commercializa-tion of the patented invention in particular the divi-sion of fees or royalties to avoid disputes.

The Patents Act also allows a co-owner to transfer or assign his right without the consent of the other co-owners. This may result in dilution of control over the patented invention. To avoid this, the co-owners should agree on the condition of transfer of their respective ownership in the patent such that it must first be offered to the other co-owners.Copyright

For copyrighted works, the Malaysian Copyright Act 1987 (“the Copyright Act”) deems persons who

T

3. Sections 14 and 15, Patents Act 1983.1. Section 22, Patents Act 1983.2. Section 40, Patents Act 1983.

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share a joint interest in the whole or part of copyright in a work as co-owners.4

Copyright in a work rests initially with the author.5 In the case of joint authorship, copyright will rest in both the authors jointly regardless of the contribution made by each author.

An assignment or licence granted by one copyright owner shall have effect as if the assignment or licence is also granted by his co-owner or co-owners, and sub-ject to any agreement between the co-owners, fees received by any co-owners shall be divided equally between all the co-owners.6

Similar to patents, a co-owner in a copyrighted work is free to assign the copyrighted work to third party with or without the prior knowledge or consent of the other co-owners. More importantly, a co-owner is also free to license the copyrighted work without the consent of the other co-owners.

This may present a practical problem as there may not be any control over the ownership and licensing of the copyright in the works to third parties. It is therefore recommended that joint owners should, as far as possible, enter into agreements on how copyrighted work is to be exploited or transmitted.

Although it is not expressly provided under the Copyright Act 1987, it is submitted that consent of all the co-owners are required to do any of the acts restricted by the copyright. This is consistent with the position taken by the English Courts.7 Therefore, a co-owner can bring an action against a third party or another co-owner who does an act restricted by the copyright without his license8 although he may only recover damages for his share in the copyrighted work. Trademark

Under the Malaysian Trademarks Act, 1976 (“the Trademarks Act”), where two or more persons are interested in a trademark and none of them is entitled as between himself or the other or others to use the trademark except on behalf of both or all of them or in relation to goods or services with which both or all

of them are connected in the course of trade, both or all of them can be registered as joint proprietors and that their rights are treated as if they were rights of a single person.9 Unlike patents and copyright, where the statutory provisions regulating relationship of co-owners apply in the absence of contract, the statutory rules for trademarks are mandatory. This presents some practical commercial problems.

It is often difficult to gather consent of all co-own-ers each time a license is to be granted in respect of a trademark, especially if there are more than two parties involved. Further, each co-owner may have different views on how best to exploit a particular trademark, to whom the rights should be licensed to, division of profits etc. Unanimous consent may also be impossible to obtain if the joint owners are in dispute or not on good terms.

It is unclear whether “rights of a single person” would mean that profits would be equally shared amongst joint owners. Therefore, it may be prudent that co-owners agree on division of profits.

In terms of enforcement, the Trademarks Act is silent as to whether a co-owner may by himself bring an action in court for trademark infringement and if so, whether the other co-owners must be joined as parties. It would appear that the joint owners must be parties to the proceedings and would be jointly and severally liable for costs. In a situation where one of the co-owners wishes to commence an action against a third party for trademark infringement but the other co-owner may refuse to do so for reasons that he has no interest in enforcing his rights against that third party and will not want to bear the cost of litigation, it will hamper enforcement efforts. Confidential Information

Thus far, the development of the law in relation to confidential information and trade secrets in Ma-laysia very much follows the common law position in the United Kingdom. There are no reported cases as yet which discussed the rights of joint owners of confidential information and trade secrets and how such rights can be assigned / transferred, exploited and enforced.

4. Section 27(5), Copyright Act 1987.5. Section 26(1), Copyright Act 1987.6. Section 27(4), Copyright Act 1987.7. See Cescinsky v. George Routledge & Sons Ltd. [1916] 2

K.B. 325; Ray v. Classic FM plc. [1998] F.S.R. 622;8. Section 36 (1) of the Copyright Act 1987 states that copy-

right is infringed by any person who does, or causes any other person to do, without the license of the owner of the copyright, an act the doing of which is controlled by copyright under this Act. It is the author’s view that “owner of copyright” in section 36 should be read to include a co-owner. 9. Section 21, Trade Marks Act 1976.

■ Boo Seng Ong, Messrs. Rahmat Lim & Partners, Partner,Kuala Lampur, Malaysia E-mail: [email protected]

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The rights of parties to transfer and exploit the con-fidential information / trade secrets and enforcement rights may be regulated by way of contract. Express restraint terms may be imposed on the owners which survive the termination of the contractual relationship between the parties.

However, in a situation where there is subsisting agreement or relationship or where the contractual relationship has terminated, it remains to be seen whether the Malaysian courts would apply the com-mon law position in the United Kingdom.Conclusion

The laws governing the exploitation, transfer and enforcement by joint owners of the different intellec-tual property rights in Malaysia vary. The Trademark Act adopts a more rigid approach in the governance of joint owners’ rights whilst the Patents Act and Copyright Act provides more freedom for the joint owners to enter into agreements to self regulate their respective rights. To that extent, any shortcomings in

the joint ownership can be remedied. It is submitted that much can be done in respect of

the current legislation to set out clearly the rights of co-owners in particular in terms of enforcement. The uncertainties surrounding the enforcement of rights by joint owners in respect of trademarks and copyright mean that enforcement actions may be less effective or easily challenged in particular where not all joint owners agree to enforce their rights in view of the high cost litigation or other possible adverse consequences.

In reality, creativity of inventors and authors can only flourish if there is sufficient financial support and incentive. Therefore, collaboration projects and joint ownership of intellectual property rights are and should be viewed positively. It would, therefore, be beneficial if the laws governing the co-ownership of intellectual property rights can be harmonised and clarified to ensure a consistent treatment and ap-proach for joint owners of such rights in Malaysia. ■

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IP Rights In Spain

Practical Reflections On The Co-Ownership Of Industrial And Intellectual Property Rights In Spain1 By Manuel de Torres Navarrete

rom a purely legislative perspective, this writer, in the light of the Spanish laws in force in relation to patents, trademarks, industrial

designs and intellectual property,2 must establish the following starting-point: in Spain, the regulation of the co-ownership of industrial and intellectual property rights has not been amended since its entry into force.3

On the other hand, continuing with this brief strictly legislative introduction, I must draw your attention to a second aspect: the regulation in Spain of joint ownership in the case of each of the types of industrial property rights (patents, trademarks and industrial designs) is practically identical.4

In this regard, the resulting joint ownership entity will be governed, first of all, by what is established by the participants. In the absence of agreement, the provisions of the different laws for these specific types of scenarios will be ap-plied and, ultimately, the provisions of the Spanish Civil Code on joint ownership entities.

Concerning the reg-ulations provided for these types of cases in specific laws, perhaps the most significant dif-ferences between them are (i) that the granting of licenses on trademarks or industrial designs requires the agreement of the majority of the participants, whereas the license of a jointly-owned patent requires a joint grant by all the members or a judicial authorization, and (ii) that each participant, by himself, can exploit a patent or an industrial design (a previous notification to the other co-owners is required), whereas the independent use of trademark by a co-owner requires the agreement of the majority of the participants.

However, without underestimating what has been stated, in the writer’s opinion, the true practical manifestation in Spain of the co-ownership of indus-

F

5. It should be mentioned that such case-by-case analysis in Spain occurs in the vast majority of cases in the civil courts and, to a lesser extent, in the contentious-administrative courts.

In fact, unless this writer is mistaken, up to this date there is no record of any criminal judgment which has as a really significant issue the co-ownership of industrial or intellectual property rights.

Perhaps the most similar case is the judgment of Febru-ary 6, 2004 issued by the Provincial Court of Madrid (JUR 2004\250671). This ruling, although it confirmed the convic-tion for a crime against intellectual property rights, it only ruled on the violation of the rights of the artist and performer (i.e. for the violation of the so-called “other intellectual property rights,” which must be distinguished from “copyright”), not in relation to the possible violation of the intellectual property rights (in this case, genuine “copyright”) which were held by the co-own-er of a series of musical compositions.

1.“Intellectual property rights” is a general expression involv-ing two different concepts:

• Intellectual property rights: copyrights and other intel-lectual property rights (e.g. the rights of the artist or of the performer);• Industrial property rights, which include trademarks, in-dustrial designs (both drawings and models) and patents (with respect to European regulations).

However, this article will distinguish between “industrial prop-erty rights” and “intellectual property rights” as a consequence of their practical consequences in the Spanish regulation.

2. These are Trademarks Law 17/2011, of December 7; Pat-ents Law 11/1986, of March 20, Law 20/2003, of July 7, on Le-gal Protection of Industrial Design and Royal Legislative Decree 1/1996, of April 12, approving the Revised Text of the Intel-lectual Property Law approved by Law 22/1987, of November 11, which regularizes, clarifies and harmonizes the statutory provisions in force on the subject.

3. The reader that pays attention will have noted that no ref-erence is made to other concepts such as, for example, indus-trial secrets.

This silence is due to the fact that, in Spain, these other con-cepts are not regulated by a specific law. However, this does not mean that those concepts are not protected in Spain, but rather that such protection is provided through other more general legislation such as Unfair Competition Law 3/1991, of January 10, or the Criminal Code.

4. Intellectual property has been deliberately excluded since, in Spain, the specific Law which regulates it does not include a section expressly addressing intellectual property as the subject of property law; thus, we must consider that the co-ownership of intellectual property rights is governed by Spanish civil law (the section of the Civil Code referring to joint ownership entities).

■ Manuel de Torres Navarrete, Cuatrecasas, Gonçalves Pereira, Lawyer,Madrid, Spain E-mail: [email protected]

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trial and intellectual property rights is shown in the case law of its Courts.

In fact, the co-ownership of industrial and intel-lectual property rights has been and is the subject of a rich case-by-case analysis, which cannot be covered in its entirety in this article.5

In this respect I am aware that this is not the best place nor the most appropriate time to provide a thorough dissertation on the potential problems in which the co-ownership of rights would be a further element to be taken into consideration. However, this does not discourage me from venturing responses to certain practical questions which have occurred to this writer while writing this article.

Thus, one might wonder, for example, whether a company which is already an equal co-owner of certain distinctive signs could seek for itself a new trademark similar to the previous ones based on the fact that “each participant may avail of the common things, provided that he uses them in accordance with their purpose and in a manner that does not prejudice the interests of the joint ownership entity, nor prevents the co-owners from using them in accordance with their rights” (Article 394 of the Spanish Civil Code).

The Contentious-Administrative Chamber of the Spanish Supreme Court resolved this issue in its judgment of November 17, 2004 (RJ 2004\7372), concluding that:

“there are two forms of harm which would arise from a registration such as that sought for one of the joint owners: first of all, the joint ownership entity’s own right to use that trade name would be hindered, since another had been previously registered in favor of another person, although the latter is a joint owner, and, secondly, the reputation and fame of its trademarks would be extended to another person or entity, to the detriment of their image and confusion for consumers.”6

Although the basis for the ruling quoted is logical, an additional reason not considered in it could be

added: since the Court tacitly accepts that the act of filing a new distinctive sign by a joint owner could be classified as a “use of the common thing”, it would have been sufficient to verify whether there was an agreement of the majority of the participants.7

In any event, in the light of the regrettable eco-nomic situation in which we are placed, the following issue seems to me more interesting: can an industrial and/or intellectual property right be seized as a result of an insolvency order against a company knowing that such right is jointly owned?

The answer is “yes”, since industrial and/or intel-lectual property rights in Spain, in general, are not subjected to different treatment from that which would be applied to any other jointly-owned rights or property in relation to aspects such as the possible seizure, mortgage of same, etc.

Therefore, in such cases, we would have to observe the provisions of the common legislation in this type of situations.8

The perceptive reader will have noted that the reference to the common rules has been made in general. However, this does not mean that there may not be exceptions to the common rules.

For these purposes, particularly noteworthy are the rights of first refusal and of repurchase which are enjoyed by the other joint owners in situations of assignment of a trademark (or of a quota) or in acts which involve the disposal by a co-owner of his quota in a patent or in an industrial design; provided that the terms “assignment” and “disposal” could be understood in a broad sense, as equivalent to any transaction which involves the transfer of ownership.

If we go back to the case with which we opened this question, would it not be illogical to consider that the co-owners of this type of rights could exercise the rights of first refusal or of repurchase which are conferred on them by specific laws in situations in which the seizure of a specific share has occurred?

Please, allow me to leave open the possible debate, since the writer is not aware that this circumstance has already arisen in the Spanish case law.

Before ending, I would like to mention a third manifestation of the individual powers of the joint owners, due to its practical repercussions: the filing by themselves of actions in defense of the common right.

This characteristic is shared by the Spanish legisla-tion on trademarks, patents and designs and both,

6. This is so regardless of the fact that the new trademark was refused due to the opposition filed by the other equal co-owner of the previous distinctive signs (in other words: the other co-owner filed by himself the appropriate judicial proceedings in defense of the previous trademarks).

7. We should recall that when the Spanish Trademarks Law mentions the “independent use of the trademark by each mem-ber,” in the absence of agreement, it expressly refers to Article 398 of the Civil Code (which establishes as a general criterion the agreement by the majority of the participants), not to Article 394 of the same legislation, which was the rule analyzed by the Supreme Court.

8. In our case, the seizure would affect the specific quota of the insolvent company over such right.

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legal doctrine and case law, understand that the expression “actions in defense of the common right” do not only include civil and criminal proceedings in defense of the right in the strict sense, but also any acts aimed at its defense and preservation in the broad sense.

Thus, questions such as whether it is possible for a co-owner, alone, to be able to seek the renewal of the common right, file an opposition to the registration of subsequent rights or even terminate a contract with a third party, have an affirmative answer.

It is obvious that this article leaves numerous is-sues unaddressed. However, I accept such omissions without any remorse. I do so because, as has already been mentioned, the purpose of these lines was only sharing with you some of the reflections which, from a practical perspective, came to my mind regarding the joint ownership of industrial and/or intellectual property rights.

Therefore, I am sure that you will forgive me if I leave many other issues to be dealt with in depth in other possible articles. ■

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Joint Ownership In Turkey

Joint Ownership Of Intellectual Property Rights In TurkeyBy Omer Hiziroglu and Yucel Hamzaoglu

n Turkey, Intellectual Property ownership rights are generally addressed in the applicable laws regulat-ing patents, Decree Law 551 (“DL 551”), trade-

marks, Decree Law 556 (“DL 556”), and Copyrights, Law 5846 on Intellectual and artistic works (“5846”). While these legislative texts generally address the ownership rights regarding joint ownership, for the intricacies and specific circumstances one must refer to other legislative texts, such as the Turkish Civil Code (4721) and the Code of Obligations (6098).

As an introduction, we note that with regards to patents, in the context of a joint invention, the ownership interests of the joint investors shall be as “joint-owners” as opposed to Copyrights where ownership interests on jointly created works shall be on “co-owner” principles.

In practice we observe that most issues and litiga-tion related to, which are often difficult to manage and monitor ownership issues arising out of the claims of two or more claimants, are in the area of Copyrights. The authors, at the time of the drafting of this article are not aware of any case law regarding joint ownership related disputes or case law arising out of patents.

A note on patents: with increasing university—industry collaboration projects, we note that when ownership issues on the potential invention are lead-ing to a deadlock, parties look upon a “joint patent” as a mutually acceptable compromise, often unaware of the possible risks of future disputes that a joint patent may lead to during the commercialization process. Most collaborative agreements address the issue with a basic language, such as “all intellectual property rights arising out of this agreement shall be jointly owned by the parties.” While this simple but naive approach resolves the negotiation deadlock, we observe first signs of trouble when an IP disclosure does indeed happen and parties face the music for the first time as they try to struggle with basic ques-tions, such as: Who shall manage the application? Who should be named as inventors? Who shall have the right to (exclusively) commercialize the invention? How to handle various approaches that national legis-lations have regarding the maintenance, exploitation and enforcement of intellectual property rights? We have also observed an extreme case where a party

simply filed for a patent in its own name, naming only its inventors in the application in a clear breach of the research agreement that had called for a joint application. Thus, we would expect to see Turkish courts forced to address issues of joint ownership of patents in a relatively near future as the “easy way out” short term solutions lead to long-term disputes.

In this article we focus solely on joint ownership issues pertaining to patents and copyrights in Turkey. We purposefully left out trademark issues as these should be the subject of a separate article. We will simply note that the Turkish trademark law, the Decree Law 556 is essentially silent on issues relat-ing to joint-ownership interests on trademarks. As a trademark’s main purpose is to identify the source and origin of the goods and services offered under it, a jointly owned trademark appears to be a rare occur-rence and possibly goes against the main reasoning behind the trademarks. The DL 556 does, however, address collective marks, a different concept, in its article 55. We can, however, anticipate that the is-sues relating to joint owners’ rights of a trademark are likely to be controlled by the Turkish Civil Code and the Code of Obligation’s relevant provisions. We have also left out issues relating to trade secrets.Joint Ownership Rights in Patents

In Turkey, patents and rights related thereto are regulated under the Decree Law No 551 (“551”) enacted in 1995.1 Turkish law distinguishes inventor from the applicant. While the inventor has to be a real person, an applicant may be a real person or a legal entity as would be the case of employee inven-tions. The right to apply for a patent is reserved by 551 to the inventor or inventors such as a right is transferable. If the invention is conceived by two or more persons then these inventors will be deemed joint inventors. Unless parties have agreed otherwise in writing, they will have right to file for a patent as “joint-owners.”

Article 85 of DL 551 states that the rights of joint-

I

1. A new revised law is expected to pass this year. As of the date of this article, 551 is still the controlling legislative text. However, we don’t expect to see critical changes regarding joint ownership rights in the proposed draft legislation.

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owners shall be controlled by the agreement between the parties. In the absence of an agreement between the parties, the same article refers to Turkish Civil Code’s joint-ownership provisions. However, article 85 further states that each right holder can: i) freely dispose of or transfer his portion of the right. In the event the right is to be transferred to a third party, the Turkish Patent Institute shall provide a notice within two months to the joint-owners who benefit from a first right of refusal to be exercised within one month of the receipt of the notice; ii) use the invention provided a notice is given to the other right holders; iii) take measures to protect the patent ap-plication or the patent as the case may be; iv) in the event there is an alleged infringement of the patent or the pending application, enforce such rights by bringing an enforcement action or place a criminal complaint. However, the party bringing forth the action has a duty to notify other right holders within one month of the initiation of the law suit so that these parties can join the law suit. A crucial part of article 85 states that in the event the invention is to be licensed to a third party, such license is only possible by a decision of all joint owners. Thus a licensee of a Turkish patent should require that all joint owners sign the license agreement; or if dealing with one of the joint owners, require the licensor to provide a written document that other joint owners have assented to the license agreement.

In the event the joint invention is used by one or more of the joint owners, it is suggested that those who utilize the invention pay a fair value for the use of the invention to the joint owners. If the joint owners cannot agree on the fair market value for the uses of the invention, the issue will be decided by the court.2

For matters related to joint ownership where 551 is silent, ownership rights shall be deemed to be an issue of joint ownership as regulated by the Turkish Civil Code and ordinary partnership provisions of Turkish Code of Obligations. Accordingly, we can anticipate that Turkish law will require unanimous decision of the joint owners on transactions on the patent. It is further implied that all joint-owners have an equal interest on the patent and all rights related thereto.

Turkish Civil Code 4271 states in its pertinent provisions that, unless otherwise agreed by the par-ties, all rights are shared equally. Each right holder is free to transfer his or her right, post it as a security,

and all such rights are subject to attachment by the joint-owner’s creditors.

Article 689 of 4271, while clearly drafted with real property in mind, states that parties can agree amongst themselves and allocate the rights to use and manage the joint property. However, parties cannot allocate the rights and obligations with regards to the management of the joint property in issues related to the safeguard of the value of the joint property, and actions to be taken to prevent damages or risk of damage to the property. Article 694 states that, unless otherwise agreed by the parties, all ex-penses, including taxes and management fees are to be shared equally by the parties. Thus, it is suggested that patent maintenance fees will be shared by the parties equally unless parties state otherwise in an agreement, and parties may be, by analogy to real property, required to act together in ac-tions that may threaten the continued existence, validity of the patent.

Article 693 states that one of the joint owners can represent the other owners to protect other parties’ interests. We can also state that in the event a joint-owner dies, his interest on the patent shall pass to his/hers heirs as part of the estate.Co-Ownership in Copyrights

Turkish Copyright Law (5846) (The law on intellec-tual and artistic works) states that unless otherwise provided (i.e.: under an employment contract/work for hire) the copyright on the work covered by the law belongs to the author of such work. A work of authorship may result as the effort of one or more authors. The law distinguishes works resulting from the joint effort of one or more authors (joint works) from collective works where the work in question is a compilation of several, otherwise independent works such as in an anthology. For the purposes of this article, we shall discuss only joint works (not to confuse with “joint ownership”).

In context of joint works, it is assumed that all au-thors have contributed to create an indivisible single work whereby the contribution of one author cannot be separated from the work without compromising

2. Ünal TEKİNALP, Fikri Mülkiyet Hukuku, Arıkan Yayınları, 2005 p. 512.

■ Omer Hiziroglu, CLP,Innovent Innovative Ventures, General Manager, Gebze, Kocaeli, Turkey, E-mail: [email protected]

■ Yucel Hamzaoglu,BTS Attorney Partnership, Director, Istanbul, Turkey E-mail: [email protected]

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the nature and the integrity of the work as a whole.While it is possible that all authors may not have

contributed equally to the resulting work, each au-thor’s contribution must be creative in its nature. A mere technical assistance to the creation of the work will not justify a claim of authorship. For instance, a research assistant’s compilation of data shall not be deemed to generate an ownership interest or a right to claim a co-author credit on the resulting academic publication.

With regard to the rights and obligations in context of joint works, Turkish copyright law 5846 refers to Turkish Code of obligations and defines the relation-ship between the right holders as that of a simple partnership. However parties are free to allocate these rights and obligations among themselves with a written agreement.

Because the relationship among the right holders is defined as a simple partnership, the ownership interests will be defined as co-ownership within the pertinent sections of Turkish Civil Code and these sections will control, by analogy the ownership inter-ests of the parties to the extent they are applicable to works of authorship.

A critical distinction between co-owner interests as opposed to joint-ownership interests in patents is that under co-ownership, co-owners have a property interest on the entirety of the work as a whole. Co-owners will not have a right to transact on or transfer the work subject to co-ownership or the portion they have contributed independently from the other co-owner.3

Under simple partnership system, all profits and losses on the work shall be shared equally among the co-owners. Articles 523 and 524 of the Turkish Code of Obligations suggest that co-owners have an equal say on the use of rights on the work. Whether seen under the simple partnership provisions of the Code of Obligations or under the co-ownership statute resulting from the Civil Code, a unanimous decision of the co-owners will be needed for the management of the co-owned work or any transac-tions with third parties.4

If one co-owner unreasonably withholds his or her consent in a transaction where unanimous action is required, the party that seeks the consent may take the issue to the court, in the event the court decides

favorably with regards to the contemplated transac-tion, that court’s decision will be deemed to be the co-owners consent.

With regards to moral rights on the work, the law deems these rights to be personal rights and any co-owner is free to exercise these rights without the consent of the other co-owner, provided that such exercise does not infringe the other co-owner’s rights on the work.5

In the event of an infringement of the copyrights on the joint work, any co-owner may act alone to protect the interests on the co-owned work or the interest of the co-ownership. However, a co-owner who is seek-ing to enforce the copyright may not benefit alone from the results. In the event a court action finds infringement and damages are awarded, the other co-owner shall have an equal right on such damages Conclusion

As a general rule, joint or co-ownerhip of intellec-tual property represents challenges in practice as it is the case in most jurisdictions. The main challenge comes from the fact that unless a joint-ownership agreement exists between the parties, the dynam-ics of the relationship along with mutual rights and obligations may be subject to various legislative texts, the scope and application of which is very often not anticipated. In the event an agreement is entered into by the parties, the agreement must be carefully drafted by an experienced attorney who can, not only anticipate possible issues arising out of the laws of the local jurisdiction (so that the agreement is not in conflict with existing law) but also takes into account various ownership issues in foreign jurisdictions where the intellectual property is to be exploited. Not an easy task. One must also take care in iden-tifying parties’ overall interests on the underlying intellectual property and their capacity to enforce, exploit and commercialize the intellectual property. Joint-ownership of the IP should not be seen as a pos-sible compromise, as in joint R&D agreements, but a solution of last resort in case of a deadlock. Indeed, it is the authors experience that much more practical solutions, such as exclusive license rights and future options, exist provided that parties take the time to educate each other during negotiations and identify common goals and mutual abilities and independent objectives. In any event, a template joint ownership agreement will most likely cause more problems in the long term than it solves in the short term, and both sides should seek experienced legal opinion. ■

5. Ayiter, p. 102.

3. Nuşin AYİTER, “Hukukta fikri ve Sanat ürünleri,” A.Ü. Hu-kuk Fakülteis Yayınları, Ankara 1972 p. 102.

4. Mustafa Ates “Fikri Hukukta Eser Sahipliǧi” Adalet Yayınevi, Ankara 2012 Ed 1, p. 218.

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IP In The UK

Joint Ownership Of IP In The UK—Joined Up Thinking Or Just A Little Disjointed?By Fiona Nicolson and Catherine Terry

hen two parties consider entering into a collaboration through which Intellectual Property (“IP”) may be created, it is funda-

mental for them to consider who will own, be entitled to use, and be responsible for maintaining that IP. Joint-ownership may appear to be a straightforward and fair solution where IP results from joint effort and investment. However, joint-ownership often has unsatisfactory implications for collaborators, particu-larly where they rely on the default position under applicable laws to determine their respective rights in the relevant IP. It is therefore usually preferable for collaborators to: (i) put an agreement in place specifying their respective rights and obligations in relation to IP that is to be jointly owned; and/or (ii) agree to an alternative apportionment of rights in the IP at the outset.

This article considers the default rights of joint owners of certain types of IP under English law, the problems that may arise if IP is jointly owned, and some alternative ways in which rights in IP could be handled.Categories of Joint Ownership Under English Law

Under English law, property, including IP, can be held by co-owners as either “joint tenants” or “ten-ants in common.” Where property is held as joint tenants, each owns the whole of the asset, rather than a distinct fractional share. On the death (or in the case of a company, insolvency) of a joint tenant, the asset does not become part of his estate, but instead passes automatically to the surviving joint tenant. In contrast, tenants in common each own a separate share in the relevant asset. When a tenant in com-mon dies or becomes insolvent, that tenant’s share passes into the tenant’s estate to be distributed in accordance with any valid will or the law on intestacy or insolvency as applicable.

Co-owners of IP usually hold the property as ten-ants in common. However, to avoid uncertainty, it is prudent to state, in any agreement dealing with the co-ownership of IP, how that property is to be held between the parties.

The Default Rights of Joint-Owners of IP Under English Law

In any collaboration it is likely that a variety of IP will be generated. This could include patents for new technology, copyright in documents and other materials produced, and know-how developed between the parties. The default rights of co-owners differ in relation to the various types of IP under English law. This can make it difficult for collaborators to keep track of their respective rights and obligations (and therefore man-age and protect jointly owned IP effectively) unless they are clearly set out in an agreement. To add further complexity, co-owners’ default rights in relation to each category of IP also vary from country to country so, for example, the rights of co-owners of a UK patent differ from those of co-owners of a U.S. patent.Patents

Usually, where two or more persons have jointly developed a patentable invention, they will both be entitled to apply for a patent for that invention. Section 36 of the Patents Act 1977 provides that, subject to agreement to the contrary, where a patent is granted to two or more persons, each of them shall be entitled to an equal, undivided share in that patent. A jointly developed invention that is the subject of a patent will therefore be co-owned, and the co-owners will hold that patent as tenants in common, unless they agree otherwise.

(i) Exploitation and LicensingThe value of a patent lies in the ability to exploit the monopoly that it creates. A key issue for co-owners is the extent of their entitlement to make use of the claimed invention. Under section 36(2) of the Patents Act, a co-owner is entitled, “by

W■ Fiona Nicolson,Bristows, Partner, London, United KingdomE-mail: [email protected]

■ Catherine Terry,Bristows, Associate, London, United KingdomE-mail: [email protected]

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himself or his agents” to do for his own benefit, and without the consent or need to account to the other co-owner, any act which would otherwise amount to an infringement of the patent (or pat-ent application). In broad terms, a co-owner may therefore manufacture, sell and import a patented product or use a patented process. However, his right is limited to exploitation of the patent ‘for his own benefit.’ This has been held to permit only what might be called “home use” and not large scale exploitation through the grant of licences1

or by using a third party to manufacture the pat-ented item for commercial sale by the co-owner (although a co-owner may use a third party to make a patented item, provided that it is for the sole use of the co-owner).In order to grant a licence under a patent, a co-owner requires the consent of all other co-owners (unless they have expressly agreed otherwise). Each co-owner also needs the consent of all other co-owners to assign, or grant security over, his interest in the patent.2

It is clear that the default ability of co-owners to exploit their rights in a patent is significantly restricted by the need to obtain consent of other co-owners. In the context of collaboration this could give rise to obvious tensions. For example, where a commercial entity and an academic insti-tution engage in collaborative research, although both parties will be entitled to exploit co-owned patents commercially, the academic co-owner often lacks the resources to manufacture and market the patented invention itself. It would only be able to commercialise the patented technology by granting licences, but will not be entitled to do without the industry co-owner’s consent. The industry co-owner is unlikely to agree to the aca-demic co-owner granting a licence to a potential competitor (as this could reduce its own revenue stream from exploitation of the patent). The aca-demic co-owner’s inability to grant licences may not be problematic, provided that the industry co-owner is successfully exploiting the patent (and paying the academic institution a reasonable royalty in respect of such exploitation). However, conflict could arise if the commercial entity fails to exploit the patent and the academic institution identifies third parties who would be willing to pay a royalty in return for a licence of the patented

technology. The commercial entity might refuse its consent to the grant of such licence, or request such a high fee or royalty in return for giving con-sent that the licensing deal is not viable for the academic co-owner.In situations of deadlock between two co-owners in relation to the grant of a licence, the Comptrol-ler General of Patents has discretion to decide whether one co-owner should be allowed to grant a licence to a third party, despite the opposition of another co-owner.3 Although the Comptrol-ler is required to exercise this power rationally, proportionately and fairly, and to have regard to all the circumstances of the case in reaching his decision, the outcome may be unsatisfactory to a co-owner. It is therefore usually preferable for the parties to agree on the circumstances in which each of them will be entitled to grant licences of co-owned patents upfront, to avoid unnecessary disputes, uncertainty and disappointment.(ii) Enforcement, Prosecution and MaintenanceThe automatic position in relation to prosecution of patents is that any co-owner may take action against an infringer without the consent of other co-owners, provided that other co-owners are joined to the relevant action.4 Such joined co-owners will not bear any expenses of the action unless they take an active role in the proceedings.This appears, at face value, to be convenient for co-owners. However, conflicts can arise where one co-owner does not want to be actively involved in litigation but wants the patent to be enforced. For example, in an industry/academic collaboration, an academic institution is unlikely to be able to bear the financial burden of bringing an action against an alleged infringer, but would want the industry co-owner to do so (to prevent the infringer reduc-ing the income that the industry co-owner can generate through exploiting the patent, and there-fore the royalty it pays to the academic co-owner). The industry co-owner may feel that the patent is weak and/or that the likely costs of litigation outweigh the potential benefit of enforcing the patent. In the absence of contrary agreement, the academic institution cannot compel the industry co-owner to bring an infringement action in these circumstances.

1. Henry Bros v. The Ministry of Defence [1997] R.P.C 693.2. Section 36(3) Patents Act 1977.

3. Section 37 Patents Act 1977.4. Section 66(2) Patents Act 1977.

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A co-owner also requires the consent of all other co-owners to amend the patent specification.5 This could cause issues where the validity of a patent is challenged (as is often counter-claimed in infringe-ment proceedings) as the co-owners would have to agree any amendment to the patent’s scope. Co-owners may prefer to agree upfront that one co-owner will have responsibility for prosecution and maintenance of the patent and be entitled to amend the patent freely.

CopyrightCopyright, like patent rights, may be jointly owned.

A copyright work will be considered a work of ‘joint authorship’ if it is created by two or more people and the contribution of each person is not distinct from that of the other(s).6 Joint authors are usually joint first owners of copyright in that work. As with co-owners of patents, joint owners of copyright will generally hold the copyright as tenants in common.7

(i) Exploitation and LicensingThe position for joint owners of copyright in relation to exploitation is more restrictive than that for co-owners of patents. Section 16(2) of the Copyright, Designs and Patents Act 1988 provides that copyright is infringed by “a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.” A joint owner there-fore requires the permission of other joint owners to exploit the work. In order for a third party to be granted a licence of a jointly-owned copyright work, such licence must be granted by all of the joint owners.8 This creates obvious potential problems in the context of collaborations where one party will be responsible for commercialising jointly-created works. The parties may prefer to give written consent upfront to particular forms of exploitation by one party. Alternatively, they may agree that works of joint authorship will be owned by one party, subject to a licence to the other party to use it for specific purposes, or to restrictions on the owning party granting licences of, or assigning, the copyright work.Joint owners of copyright may assign their own interest in a work without the consent of the other

joint owners. Any such assignee will then become a joint owner of the copyright, together with the other remaining joint owners.(ii) ProsecutionAs is the case for joint owners of patent rights, each joint owner of copyright may sue for infringe-ment of the co-owned copyright without the consent of the other co-owners. In contrast to the position for patents, a joint owner of copyright is not obliged to join other joint owners to the action.

Confidential InformationCollaboration invariably yields a wealth of new

information and know-how. Even where such infor-mation and know-how does not qualify for patent protection, it will often be potentially valuable to the parties for so long as it remains confidential. Whilst it remains secret, information can be protected by the common law duty of confidentiality and/or the imposition of contractual confidentiality obligations.

Confidential information is not classified as ‘prop-erty’ under English law and so cannot strictly be “owned.” However, if several parties develop know-how jointly, they will each have rights in respect of that information.

(i) ExploitationUnder English law, joint developers of confidential information may each use the information and disclose it to licensees, unless they have agreed otherwise.9

Again, this creates much potential for conflict be-tween the interests of collaborators. For example, a common conflict arises in industry/academic collaborations between the academic institution who is desirous of publishing the results of joint research in academic journals, and the industry collaborator who wishes to keep them secret. Unless the parties agree otherwise, the academic collaborator is entitled to publish the information which would then no longer be confidential, leav-ing the industry collaborator’s competitors free to use it. This could be a significant loss to the industry collaborator, especially if it provided the funding for the joint research. Commercial enti-ties may therefore wish to include provisions in research agreements with academic institutions, restricting or preventing publication of results.(ii) EnforcementIf one joint-developer of information discloses it

9. Murray v. Yorkshire Fund Managers Limited [1998] FSR 372

5. Section 36(3) Patents Act 19776. Section 10(1) Copyright, Designs and patents Act 19887. Copinger and Skone James on Copyright, Sweet & Maxwell Ltd, §5-169, 16th edition8. Section 173(2) CDPA

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IP In The UK

to a third party under a contractual obligation of confidentiality and that third party subsequently discloses the information in breach of that obli-gation, only the disclosing joint-developer would have a cause of action against the third party. The other joint-developer would lose any benefit that it might have obtained had the information remained confidential, but would not have any redress against the third party (or the disclosing joint-developer unless otherwise agreed).It is therefore crucial that parties engaging in joint research set out their respective rights and obli-gations with regards to any resultant confidential information in a legally binding agreement.

Alternatives to Co-OwnershipAs we have seen above, there are numerous po-

tential pitfalls associated with co-owning IP. Some alternative ways to share rights in jointly created IP, which may help to resolve those problems, are set out below, though which is the most appropriate will depend on the particular circumstances.

(i) The parties could agree that one of them will own all jointly-developed IP, but will licence it back to the other party (on such terms as the parties agree). This may suit situations where one party has more resources to commercialise, prosecute and maintain the IP. Collaborators opting for this allocation of rights would need to consider the extent to which the designated owner should be required to consult with the other on patent strategy, and whether any costs associated with patent protection should be shared. The parties may also want to consider whether any restric-tions should be placed on the designated owner’s ability to grant licences of the IP to third parties and whether the non-owning party should have an option in relation to that IP (discussed further at point (iii) below).(ii) Rather than one party owning all jointly-developed developed IP, the parties may decide that each should own such of it as relates to that party’s pre-existing technology. Again, each party could grant a licence back to the other party of the resulting IP that it owns. This solution may be suitable where collaborators share their own

pre-existing technology for the purpose of joint research, particularly where resulting IP cannot be used independently of one party’s background technology.(iii) A further alternative is for one party to own the IP resulting from collaboration, but grant an option over that IP to the other party. An option would give that party an entitlement to be granted certain rights in the IP on request (e.g. a licence or an assignment). An option can be stated to be exercisable at a specific point (e.g. at the end of a collaborative research programme) or on occur-rence of a certain event (e.g. if a patent is granted for technology forming part of the IP). An option could also be used to protect a party’s position if the other is granted ownership of jointly-devel-oped IP at the outset but fails to make sufficient efforts to commercialise it.(iv) If one party owns jointly-developed IP initially, the other party may wish the owning party to be obliged to offer it the first opportunity to take an assignment or licence of the resulting IP in cer-tain circumstances (a ‘right of first refusal). For example, the non-owning party could be given the first option to take an assignment of any IP that the owning party no longer wished to maintain.(v) Where numerous parties are involved in col-laboration and/or collaboration relates to a large portfolio of IP, the simplest way to handle that IP and allocate rights to use it may be to set up a patent pool from which each collaborator can be granted the rights that they need. This involves complex competition considerations, which should be borne in mind if this option is chosen.

As illustrated above, co-ownership of IP is one of many options open to parties engaging in joint projects when deciding how to share rights in the fruits of their labours, but may not be the fairest or the best way for them to do so. When deciding how to share rights in jointly-created IP, parties should be mindful of the issues that they may face as joint owners, consider the use that each of them will need to make of the jointly-created IP, and work out which party will be best able to protect and exploit that IP to maximise the benefit to them both. ■

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U.S. Joint Ownership

Joint Ownership Of United States Patents, Trademarks And CopyrightsBy D. Patrick O’Reilley, Julia Anne Matheson and Margaret A. Esquenet*

n the United States, all intellectual property rights may be jointly-owned. The legal consequence of such an ownership structure is different for

each type of intellectual property. Accordingly, this article addresses patents, trademarks and copyrights separately.

Although often considered a form of intellectual property, this article does not address joint owner-ship of trade secrets or proprietary information. Such non-statutory intellectual property may be jointly owned by virtue of independent development, each owner being free to exploit and grant rights without accounting to, and in fact, without knowing about, the other joint owner. Joint ownership may also arise from disclosure of the information under contract terms. An owner’s rights and obligations will be dependent on the terms of the contract. Patents

Joint ownership of a patent results from issuance of the patent to joint inventors or from a contractual assignment to more than one assignee. In the first case, absent a written assignment agreement, a patent issuing to joint inventors is presumed to be jointly owned by them.1 A joint inventor of only one claim of a patent will be a joint owner of the entire patent.2 In the second case, a patent may be assigned to multiple owners, each of whom would be a joint owner or co-owner of the patent regardless of the respective interest in the patent. Thus, for example, in an assignment of 90 percent interest in a patent to one person and 10 percent interest to another person, both would be joint owners and each would have an undivided interest in the patent.

A joint owner, whether by virtue of being a joint inventor or by assignment, is free to exploit the pat-ent without accounting to the other joint owners unless there is an agreement among the joint own-ers. The U.S. Patent Law provides:

§ 262. Joint OwnersIn the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell and sell the patented in-vention within the United States or import the patent invention into the United States, with-out consent of and without accounting to the other owners.3

The U.S. Court of Appeals for the Federal Circuit enumerated the rights of joint owners of U.S. patents in Schering Corp. v. Roussel-UCLAF SA:4

Each co-owner of a United States patent is ordi-narily free to make, use, offer to sell, and sell the patented invention without regard to the wishes of any other co-owner. 35 U.S.C. §262. Each co-owner’s ownership rights carry with them the right to license others, a right that also does not require the consent of any other co-owner. …Thus, unless the co-owner has given up these rights through an “agreement to the contrary,” 35 U.S.C. §262, the co-owner may not be prohibited from exploiting its rights in the patent, including the right to grant licenses to third parties on what-ever conditions the co-owner chooses.5

I

3. 35 U.S.C. §262 (2006).4. 104 F.3d 341 (Fed. Cir. 1997).5. Id. at 344.

*The authors thank Derrick Wang, a 2012 summer associate with the firm, for his contribution to the trademark portion of the article.

1. See Bellehumeur v. Bonnett, 127 Fed. Appx. 480 (Fed. Cir. 2005); Regents of Univ. of N.M. v. Knight, 321 F.3d 1111, 1119 (Fed. Cir. 2003) (observing that, unless assigned under 35 U.S.C. § 261, the “initial ownership of a patent vests in the inventor by operation of law”).

2. See 35 U.S.C. §116 (2006); see also Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998).

■ D. Patrick O’Reilley, Finnegan, Henderson, Farabow, Garrett & Dunner, Partner, Washington, D.C., USA E-mail: [email protected]

■ Julia Anne Matheson, Finnegan, Henderson, Farabow, Garrett & Dunner, Partner, Washington, D.C., USA E-mail: [email protected]

■ Margaret A. Esquenet, Finnegan, Henderson, Farabow, Garrett & Dunner, Partner, Washington, D.C., USA E-mail: [email protected]

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A joint owner of a patent may not sue an infringer without the voluntary cooperation of the other joint owners.6 This is based on the U.S. court requirement that all parties having an ownership interest in the patent must be present in any suit to enforce or to invalidate the patent.

Because each joint owner of a patent is free to ex-ploit and to license the jointly-owned patent, a joint owner cannot grant an exclusive license without the cooperation of the other joint owner. A joint owner could grant an exclusive license under its interest in the patent, but that would not prevent the other joint owner from also granting licenses.

An agreement among joint owners is necessary if they wish to facilitate enforcement of the patent, to control licensing or to share in revenue from exploit-ing and/or licensing the patent. Not all of these issues need to be addressed in an agreement, although an agreement on enforcement without an agreement on licensing may be unsatisfactory. In the Schering decision, Schering and Roussel jointly owned the patent at issue. By agreement, each authorized the other to sue independently for infringement of the jointly-owned patent, and each agreed to cooperate in any such suit brought by the other. Schering sued Zeneca for patent infringement. In compliance with the obligation to cooperate, Roussel permitted use of its name as co-plaintiff. Two weeks later Roussel granted Zeneca a license under the patent. Because suit was filed before Zeneca had sold any infringing product, the license was a complete defense, and the district court dismissed the action. The Federal Circuit affirmed, noting that the agreement did not restrict the right of a co-owner to exploit or license the jointly owned patent. Thus, even though Schering had the contractual right to sue and Roussel was required to cooperate in such a suit, Roussel was able to render Schering’s right meaningless by granting the alleged infringer a license.

Joint development or research agreements com-monly provide that patents on inventions jointly made by employees of both parties will be jointly owned by the parties. Because of the statutory independence of joint owners and the inability to enforce a jointly-

owned patent unilaterally, such agreements should address the rights and obligations of the parties with respect to possible future jointly-owned patents, in-cluding who will file for and obtain patents on joint inventions, who will pay for it, who can enforce a jointly-owned patent and how will the other co-owner cooperate, and who can grant licenses under the jointly-owned patent and will revenue from such licenses be shared.

Where the co-owners are competitors—a not un-likely event in a joint development agreement—the requirement of joint approval of licensees could be pejoratively described as a conspiracy to restrain competition, particularly if the additional license is not granted for lack of joint approval. That problem aside, any agreement on licensing or enforcement of a jointly-owned patent may be difficult to achieve, particularly where the parties are competitors, which may be why many joint development agreements lack provisions addressing the issues.Trademarks

In joint ownership of a trademark, multiple parties either own a single mark (for example, multiple rela-tives owning the Zankou Chicken restaurant name,7 or bandmates owning the name of their performing group) or combine their respective pre-existing marks into a composite mark which they own (for example, the Diamond nut company and Sunsweet dried-fruit company applying to jointly register the composite mark Diamond/Sunsweet for fruit-and-nut gift pack-ages).8

Joint ownership of trademarks presents specific problems because trademarks differ in purpose from patents and copyrights. Unlike patent law and copy-right law (which aim to encourage invention and ex-pression, respectively), the trademark law’s “general concern,” according to the U.S. Supreme Court, “is with protecting consumers from confusion as to [the] source” of goods or services.9

Unfortunately, joint ownership of a trademark can easily lead to scenarios “likely to cause confusion, or to cause mistake, or to deceive.”10 For example, if two independent parties jointly own a mark, no single co-owner has total exclusive control over the

7. Iskenderian v. Iskenderian, 144 Cal. App. 4th 1162, 1164 (2006).

8. In regards to Diamond Walnut Growers, Inc., and Sunsweet Growers Inc., 204 U.S.P.Q. 507 (T.T.A.B. 1979).

9. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).

10. 15 U.S.C. § 1114.

6. See DDB Techs., LLC v. MLB Advanced Media, L.P., 517 F.3d 1284, 1289 n.2 (Fed. Cir. 2008); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710 (Fed. Cir. 2008); Israel Bio-Eng’g Project v. Amgen, Inc., 475 F.3d 1256, 1264 (Fed. Cir. 2007); Ethicon v. U.S. Surgical, 135 F.3d at 1467–68 (holding that all joint owners of patent are indispensable parties to suit for in-fringement, but they cannot be compelled to join the action absent contractual obligation).

December 2012 296


use of the mark. Therefore, if each co-owner uses the mark in a different way, consumers as a whole will have inconsistent experiences with the mark.11 Because legal authorities often ascribe likelihood of confusion to this scenario (actual or projected), a trademark co-owner may be refused trademark registration, have its trademark weakened, or lose its trademark rights entirely.A. Refusal of Registration

Joint applicants for trademark registration may not receive registration because the PTO has his-torically disfavored trademark applications submit-ted by joint applicants.12

The PTO has made an exception where the joint applicants go to great and explicit lengths to avoid customer confusion. For example, in the Diamond/Sunsweet case, the joint applicants created a sepa-rate joint venture, licensed the parent marks to the joint venture for use in the composite mark, and designed the licensing agreement to control the composite mark’s use strictly and thoroughly. Given these extensive efforts, the PTO’s Trademark Trial and Appeal Board (TTAB) approved the application.13 Since then, however, the Trademark Trial and Appeal Board has provided an easier alternative, stating that a joint venture itself can own a trademark rather than merely license it.14 Therefore, instead of attempting joint ownership, collaborators can simply create an entity that is the single owner of the composite mark—thus reaping the benefits of their collaboration while avoiding the many pitfalls of joint ownership.B. Weakening of Trademarks

If a co-owner acts in a manner that weakens the mark, court-imposed restrictions can prevent other co-owners from fully counteracting this decrease in the mark’s value. For example, courts have held that co-owners of a trademark cannot sue each other under federal trademark law for dilution or infringement. If the actions of one co-owner some-how decreases the value of the jointly-owned mark, the other co-owner may be limited in its ability to

sue the one co-owner.15 Moreover, courts have also concluded that vicarious liability can be attributed to co-owners.16 Therefore, if one co-owner of a mark is sued by a third party for use of the mark, the other co-owner may also be held liable.C. Loss of Rights

Finally, if the co-owners’ business relationship dissolves, modern courts tend to award trademark ownership to only one—or none—of the litigants, on the theory that “[t]he public interest [in avoid-ing consumer confusion] normally requires an exclusive award.”17

For example, in Ligotti v. Garofalo,18 the merchant who had conceived the fictional character The Guy From Boston and the entertainer who had played the character disputed the trademark’s ownership. The court awarded ownership to only one party: the entertainer. In Durango Herald, Inc. v. Riddle,19 the disputing parties had previously agreed that, upon dissolution of their joint venture, both or neither of them could use the joint venture’s mark. Noting the policy against dividing marks, the court decided that neither party could use the mark.

It is true that a court may still recognize joint trademark ownership if the co-owners are related. In the Zankou Chicken case,20 a family trust distributed ownership of a restaurant’s trademark equally among the three heirs. The court found this arrangement valid because “the policy of honoring the legitimate expectations of multiple family members owning the trademark would clearly outweigh any risk of custom-er confusion.”21 Nevertheless, given that subsequent courts have not yet cited this proposition, prospective joint owners should still exercise great caution lest one or both of them lose their trademark entirely.D. Exception: Performing Groups

Performing groups raise case-by-case issues. A 1955 court recognized joint trademark ownership of the group name The Ink Spots by its original members because the group name was personal to those specific performers.22 By contrast, The Beach Boys’

11. Lanning Bryer & Matthew Asbell, “Combining Trade-marks in a Jointly Owned IP Holding Company,” 98 Trademark Rep. 834, 835 (2008).

12. 2 J. Thomas McCarthy, Mccarthy On Trademarks And Un-fair Competition § 16:41 (4th ed. 2012).

13. In regards to Diamond Walnut Growers, Inc., and Sun-sweet Growers Inc., 204 U.S.P.Q. 507 (T.T.A.B. 1979).

14. In regards to Hercofina, 207 U.S.P.Q. 777, 781 (T.T.A.B. 1980).

15. Derminer v. Kramer, 406 F. Supp. 2d 756, 758 (E.D. Mich. 2005).

16. Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143, 1150 (7th Cir. 1992); see also Perfect 10, Inc. v. Visa Intern. Service Ass’n, 494 F.3d 788 (9th Cir. 2007).

17. Bell v. Streetwise Records, Ltd., 761 F.2d 67, 75–76 (1st Cir. 1985) (Breyer & Coffin, JJ., concurring).

18. 562 F. Supp. 2d 204, 216 (D.N.H. 2008).19. 719 F. Supp. 941, 951 (D. Colo. 1988).20. Iskenderian v. Iskenderian, 144 Cal. App. 4th 1162, 1164

(2006).21. Id. at 1171.22. Fuqua v. Watson, 107 U.S.P.Q. 251 (N.Y. Sup. Ct. 1955).

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corporation, Brother Records, successfully sued for-mer member Al Jardine for inappropriately using the group name.23 The case law as a whole suggests that, if the group name is not personal, then the owner of the mark is the person or entity that “controls” the “quality or characteristic [for which the group is known].”24 For convenience’s sake, then, members of a performing group (like companies forming a composite mark) should strongly consider creating a separate corporation that owns their group name; the group members can then determine the proportions and conditions of their stakes in this corporation.

In view of the foregoing difficulties arising from joint ownership of trademarks, joint ownership of trademarks or service marks is generally not recommended.Copyrights

While we will focus on joint ownership of copy-rights in the United States for works subject to the Copyright Act of 1976, it is important to keep in mind that the copyright law in effect at the time that a particular work or transaction takes place governs that act or transaction. Accordingly, earlier laws may apply to works and/or transactions that predate the Copyright Act of 1976. It is also possible to alter the statutory provisions and common law principles regarding ownership via a written contract.25 Here, we describe joint authorship in the absence of an appropriate written agreement.26 Works where the United States government is a joint author pose special considerations and may not be subject to the rules and principles discussed below.27 Joint Authorship Creates a Joint Work

When two or more authors prepare a work together with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole work, then a joint work is created and the contributors are considered joint authors.28 To be considered a joint author, the contributor must make substantive contributions to the work; mere inspira-tion or mechanical transcription is insufficient.29 Once

a joint work is created, joint authors own the work as tenants in common, meaning that each author owns an undivided share in the whole work.30 An author may also assign, license, or bequeath his or her rights in the work without the permission of the others. In that case, the transferee becomes a co-owner in the copyright.

The rights of a joint owner are not based on the extent of the contribution made by each author.31 As a result, even if a joint author contributes only 10 percent to the whole work, he or she will still own an equal and undivided interest in the copyright.32 Joint authors can change this default interest, but must do so through a written transfer of copyright in compliance with 17 U.S.C. § 204(a).Rights and Obligations of Joint Authors

Because each joint author owns the entirety of the work, each has the right to exploit the entirety of the copyright.33 Joint owners may grant non-exclusive licenses without the other joint owner’s permission and the licensee is immune from suit by the other joint owners.34 However, an exclusive license or other assignment of all rights to use the work can only be granted by all owners.35 If one owner of a copyright wishes to sue a third-party for infringement, a joint owner is not required to join his other co-owners in an action for infringement.36 The primary obligation each joint author/owner owes his or her fellow joint author(s) is the duty to account for profits made by the exploitation of the joint work.37 An author’s obligation to account to his or her joint authors is governed by state, rather than federal, law.38

23. Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003)

24. McCarthy, supra note 12, §16:45.25. Melville B. Nimmer, Nimmer On Copyright § 6.08 (2012)

(“In the absence of agreement to the contrary, all joint authors share equally in the ownership of the joint work. This is true, even where it is clear that their respective contributions to the joint work are not equal.”)

26. Id.27. See e.g. id. § 5.1328. 17 U.S.C. § 101, 201(a).29. Nimmer, § 6.03.

30. Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1145 (9th Cir. 2008).

31. Davis v. Blige, 505 F.3d 90, 96 (2d Cir. 2007); Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998) (“Joint authorship entitles the co-authors to equal undivided interests in the whole work . . . each joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to ac-count to the other joint owner for any profits that are made.”); Nimmer, § 6.08.

32. See id.33. Id. § 6.1034. Id.35. Id; Sybersound Records, Inc., 517 F.3d at 1145.36. Davis, 505 F.3d at 99; see 17 U.S.C. § 501(b).37. Nimmer, § 6.12.38. See H.R. REP. NO. 94-1476, at 121 (1976) (“Under the

bill, as under the present law, co-owners of a copyright would be treated generally as tenants in common, with each co-owner having an independent right to use or license the use of a work, subject to a duty of accounting to the other co-owners for any profits.”); Id.

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Duration of Protection for Joint WorksCurrently, copyright protection for published

works created by individual joint authors is seventy years after the death of the last author.39 For works made for hire (e.g., two or more corporate authors), the copyright lasts 95 years after publication or 120 years after creation, whichever is shorter.40 Where ownership is mixed between individual authors and corporate authors, copyright protection lasts the shortest of seventy years after the death of the last author, 95 years after publication, or 120 years after creation.41 Joint Work vs. Collective Work

A joint work should not be confused with a col-lective work. A collective work is one “in which a

number of contributions, constituting separate and independent works themselves, are assembled into a collective whole” (e.g., a magazine or encyclopedia).42 The person or entity who creates/edits the collection owns the copyright in the collective work as a whole; however, absent a contract, the copyright to the in-dividual contribution stays with the contributor. No contributor shares in the copyright to the collective work as a whole and none of the other authors may assert rights over another contributor’s piece. Conclusion

Under U.S. law, the effects of joint ownership of patents, trademarks and copyrights are significantly different. It is important to consider these effects at the time of any transaction that may create or exploit jointly-owned intellectual property. ■

39. 17 U.S.C. § 302(b).40. Id. § 302(c).41. Id. § 302(e).

42. Id. § 101.

DAVOS 2013Spirit of Licensing

LES pan europeanconference 23–25 june

Spirit of LicensingIt is with great pleasure and enthusiasm that LES Switzerland is going to host the LES Pan European Conference 2013 in Davos from 23 to 25 June 2013.

We have the honour to invite LES members and all interested in licensing, technology transfer and industrial property to come together, to exchange views and to experience the “Spirit of Licensing” – a special approach to licensing.

The program will consist of a lively mixture of lectures and workshops with international content and local flavour within a sparkling mountain atmosphere.

www.les-davos2013.org

IP100 Executive ForumFebruary 11–12Phoenix, AZ

SAVE THE DATE FOR 2013 LES MEETINGS

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© Copyright Greater Phoenix CVB

© Copyright Tim Thompson

More details coming soon. Check in at www.LESUSACanada.org

Spring MeetingMay 13–16Seattle, WA

Annual MeetingSeptember 22–25Philadelphia, PA

Sponsor both Spring and Annual Meetings and Save. Sign up in 2012 and Save Even More!

Sponsorship Packages

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New Opportunities You asked. We listened!

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Go to: www.LESUSACanada.org/sponsorship for details and to sign up now!

NEW OPPORTUNITIES TO SPONSOR LES IN 2013.MORE WAYS TO INCREASE YOUR VISIBILITY.

Dear LESI Member,

The LES Foundation is pleased to announce that registration for the 2013 Graduate Student Business Plan Competition is underway at http://les2013.istart.org, and thanks to ongoing support from LESI and LES (USA & Canada), Inc., the event is again open to students around the world.

We hope you’ll attend the Finals May 13-14 at the LES (USA & Canada) Spring Meeting is Seattle, Washington. The extraordinary mentoring, judging and feedback our member volunteers provide make the LES Competition unique in the field. We invite you to join your LES and LESI colleagues in introducing a new generation of young professionals to the field of licensing and to the worldwide network of LES.

HERE’S HOW YOU CAN GET INVOLVED! RECRUIT… a team from a local university graduate program.

MENTOR… a team on a 30-minute phone call.

JUDGE… a few business plans in your area of expertise.

DONATE… a cash or in-kind prize.

LEARN… more at www.lesfoundation.org.

Thank you for your ongoing support of this important event.

Sincerely,The LES Foundation BoardA foundation of LES (USA & Canada)

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“This competition certainly opened our eyes to many more global opportunities and encouraged us to look at the assets of our company from a completely different perspective. We got a lot out of the mentoring program. Our Australian mentors were extremely supportive and helped us take our business plan and presentation to another level. Without their support we don’t think we would have been ready to present at the LES Finals or anywhere. They were fantastic.”

2011 Finalist Stephen Dunn, LEAPIN, Univ. of Adelaide, South Australia

Finalists receive cash prizes and expenses towards the LES (USA & Canada)

Spring Meeting, world-class mentorship and networking opportunities!

May 2013 • Seattle, WA

CALL FOR ENTRIESThe LES Foundation invites MS/MBA/MD/JD/PhD students and post doctoral scholars from around the world to participate in the 2013 Competition!

QUALIFICATIONS:To participate entrants must submit a business plan with a core intellectual property component and strategies for how the intellectual property assets will be commercialized to achieve business objectives.

WHAT’S IN IT FOR YOU?• Learn the basics of intellectual property and licensing

• Mentorship, judging and feedack from professionals

• Teams learn how to use intellectual property strategy to support their plans

• Finalists win expense-paid trips to compete at the LES (USA & Canada) Spring Meeting in Seattle, WA.

GRADUATE STUDENT BUSINESS PLAN COMPETITION

L I C E N S I N G E X E C U T I V E S S O C I E T Y F O U N DAT I O N

KEY DATES:

Nov 12, 2012 Registration opens at www.iStart.com

Feb 1–28, 2013 Business Plan Submission

April 9, 2013 Finalist Announcement, 2013 LESI Annual Conference, Rio

May 13 & 14, 2013 Competition Finals 2013 LES Spring Meeting, Seattle, WA

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LES International

December 2012

Markku Jukani RajalaSingapore Yu Sarn Chiew Audrey YapSouth Africa Theo Doubell Zelda SnymanSpain & Portugal Antonio Tavira Gonzalo UlloaSwitzerland Regula Altmann Raymond Reuteler Martin SchneiderTurkey Omer Hiziroglu Ersin Dereligil

USA & Canada Ned Barlas Allen Baum Pam Cox Ted Cross Mike Dansky Bill Elkington Tom Filarski Ron Grudziecki Bob Gruetzmacher Phil Hartstein Shawn Jacka M. Rashid Khan Michael Lasinski Michael Lechter Russell Levine Dan McGavock Ken McKay Gary Nath Dwight Olson John Paul Janet Pioli Paul Roberts Art Rose Tony Venturino Jeff Whittle

Andean Community Esteban Riofrio Luis GuinardArab Countries Mohammed Al-Ansari Nabil Salame Argentina Gustavo Giay Fernando Noetinger Australia & New Zealand Mark Horsburgh Philip Heuzenroeder Tim Jones Karen SinclairAustria Thomas Bereuter Rainer KraftBenelux Geoffrey Clarke Allen Norris Lex van WijkBrazil Cândida Ribeiro Caffé Juliana ViegasBritain & Ireland Hayley French Jennifer Pierce Mark WilsonChile Felipe Claro Juan Francisco ReyesChina Alice Ngan Christopher Shaowei Feng YibinChinese Taipei Paul Hsu Paul Liu Czech Republic Katerina Hartvichova Denisa SvecovaFrance Alfred Chaouat Andre-Pascal Chauvin Emmanuel Gougé Erik Verbraeken

Germany Heinz Goddar Gunter Isenbruck Christian Osterieth Jochen Schäfer Guido von Scheffer Hungary Michael Lantos Katalin SzamosiIndia Rajashree Sharma Viswanathan Seshan Israel Neil Wilkof Dalit SagivItaly Giovanni A. Grippiotti Federico Brotta Mario Traverso Japan Katsumi Harashima Ichiro Nakatomi Makoto Ogino Junko Sugimura Yorikatsu HohokabeKorea Sang-Jin Cha Jeong-Joong (JJ) KimMalaysia Pauline Khor Janet Toh Mexico Abraham Alegria Gloria G. IslaPhilippines Leslie Anne Cruz Ferdinand NegrePoland Marek Lazewski Alicja RogozinskaRussia Margarita Divina Natalia KarpovaScandinavia Martin Draebye Ganzhorn Niklas Ostman

DelegatesOfficersPresident Kevin NachtrabPresident-Elect Yvonne ChuaPast-President Jim MalackowskiVice-President Patricia BunyeVice-President Hector Chagoya CortesVice-President Christian Osterreich Vice-President Ken McKaySecretary John WalkerTreasurer James SobierajCounsel François PainchaudCounsel Junichi Yamazaki

les Nouvelles Editorial Review BoardChair: Rodney DeBoos, Melbourne, AustraliaLex van Wijk, Amersfoort, NetherlandsBrian G. Brunsvold, Washington, D.C., U.S.A.Heinz Goddar, Munich, GermanyNorm Jacobs, Boca Raton, Florida, U.S.A.Sun-Ryung Kim, Seoul, KoreaMasato Kobayashi, Tokyo, JapanKenneth D. McKay, Toronto, CanadaThomas Bereuter, Vienna, Austria

Larry Plonsker, Editor 10580 Northgreen Dr., Wellington, FL 33449 Tel: +1-561-432-8814 E-mail: [email protected] J. Blackman, Design Interface Inc. Design & Production

Andean CommunityArab CountriesArgentinaAustralia & New ZealandAustriaBeneluxBrazilBritain & IrelandChileChina-Hong KongChinaChinese TaipeiCzech RepublicFranceGermanyHungaryIndiaIsraelItalyJapanKoreaMalaysiaMexicoPhilippinesPolandRussiaScandinaviaSingaporeSouth AfricaSpain & PortugalSwitzerlandTurkeyUSA & Canada

Luis GUINARDTalal ABU-GHAZALEHGustavo P. GIAY Mark HORSBURGHAlexander CIZEKGeoffrey CLARKERodolfo MARTINEZ Y PELLMark WILSONFelipe CLAROAlice NGANYu PINGPaul HSUKaterina HARTVICHOVAEmmanuel GOUGÉFrank L. ZACHARIASMichael LANTOSRaj HIRWANIHananel KVATINSKY Roberto DINI Katsumi HARASHIMAJeongjoong KIM Janet TOHHector CHAGOYAFerdinand NEGRE

Natalia KARPOVAKaisa FAHLLUNDAudrey YAPTheo DOUBELLJose Luis de MIGUELMartin SCHNEIDERMurat IDALThomas FILARSKI

Carolina VENEGAS GAVIRIA Nabil SALAMÉVeronica CANESEPhilip HUEZENROEDERSabine FEHRINGERAchim KREBSJosé DIASJohn ROEJuan Cristóbal GUMUCIORebecca LOYibin FENGDavid SUDenisa SVECOVAMarc BETHENODPeter K. HESSKatalin DERZSISunil KRISHNA Dalit SAGIVGian Antonio PANCOTSadaji SUGIYAMASangjin CHACHEAH Chiew Lan Carlos TRUJILLOMay CANIBA-LLORA Alicja ROGOZINSKASergey DOROFEEVPer ERICSSONElissa LIMZelda SNYMANDon Jose Miguel LISSÉNRalph SCHLOSSEROmer HIZIROGLUGary NATH

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les NouvellesVolume XLVII Number 4

(ISSN 0270-174X)

les Nouvelles is published quarterly by the Licensing Executives Society International (LESI). LESI is an associa-tion of 33 National and Regional Societies, each composed of individual members who are engaged in the profession of licensing and other aspects of transferring or profiting from intellectual property. Subscription to the journal is included in the membership dues paid by all members. Subscription for the print publication is available to non-members for US$200/year. Please contact the Editor for further details.

The articles published in les Nouvelles reflect the views of the authors and not of the Society as an association or its officers. Material printed in the journal is covered by copyright. No parts of this publication may be reproduced, displayed or transmitted in any form, without prior per-mission from the Editor or Board of LESI.

A peer review and evaluation system is used to maintain the scholarly nature of the material published in this journal. All articles submitted for publication are reviewed and evaluated by members of the Editorial Review Board (ERB). The ERB members are chosen for their expertise in the fields of licensing and intellectual property. All evalu-ations are reviewed in a double-blind fashion to remove any bias in the results. The final decision on publication rests with the editor.

A guideline for authors can be found on our Web site at the following address: www.lesi.org/lesnouvelles/advertise.asp#submission

Copyright ©2012 Licensing Executives Society International.

DEADLINES FOR les Nouvelles: Copy for publication in les Nouvelles should be received by the Editor-in-Chief as far as possible in advance of the final deadlines, Janu-ary 15, April 15, July 15 and October 15. Articles for the white pages are reviewed by the LES Editorial Review Board, and they are published as soon as possible after acceptance. All materials are to be submitted electroni-cally in either MS Word or Text Only format.

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les Nouvelles

Chairs & Co-ChairsAudit Peter Hess Awards Heinz Goddar Thierry Sueur Communications Ned Barlas Education Jeff Whittle Rob McInnes Endowment Dwight Olson Art Rose External Relations Patrick O’Reilley Sun Kim Investment Yorikatsu Hohokabe Jonas Gulliksson Wisam Hirzalla IP Maintenance Ron Grudziecki Legal François Painchaud Junichi Yamazaki Long-Range Planning Russell Levine Meetings Fiona Nicholson Membership Alan Lewis Arnaud Michel Nominations Jim Malackowski

Industry Chemicals, Energy, Environmental & Materials Rashid Kahn Achim Krebs Consumer Products Christopher Shaowei Andreas Winkler High Tech John PaulLife Sciences Pamela Cox

ProfessionalCopyright Licensing Michael Lechter Dispute Resolution Tom Filarski Industry/University Government Transactions Claire Driscoll Patent & Tech Licensing Pauline Khor Trademarks Martin Schneider

RegionalAmericas Marcela Trigo de Souza Africa and Middle East Mohammed Al-Ansari Kevin Dam Asia Pacific Audrey Yap Junko SugimuraEuropean Bruno Vandermeulen

Ad Hoc CommitteesBusiness Forums Bill Elkington Global Technology Impact Forum Hector Chagoya Martin Schneider

Valuation Dwight OlsonYoung Members Congress Tilman Mueller-StoyIP Strategy Subramaniam Vutha

Licensing And IntellectualProperty Organizations Meetings

For more information on LES (USA & Canada) or LESI Meetings call +1-703-836-3106 or go to www.lesi.org

June 23–25 LES International Pan-European Conference Davos, Switzerland

September 22–25 LES (USA & Canada) Annual Meeting Philadelphia, Pennsylvania USA2014May 18–20 LESI Management & Delegates’ Meeting (IMDM) Moscow, RussiaMay 21–23 LESI Annual Conference Moscow, RussiaOctober 5-8 LES (USA & Canada) Annual Meeting San Francisco, California USA

2013January 20–22 Global Technology Impact Forum (GTIF) Geneva, SwitzerlandFebruary 11-12 IP100 Executive Forum Arizona Biltmore Phoenix, Arizona

March 14–16 LES ANZ Annual Conference, Resourcing the Future, Stamford Plaza Brisbane, QLD AustraliaApril 5–7 LESI Management & Delegates’ Meeting (IMDM) Rio de Janeiro, BrazilApril 8–12 LESI Annual Conference Windsor Atlantica Hotel Rio de Janeiro, BrazilMay 13–16 LES (USA & Canada) Spring Meeting W Hotel Seattle, Washington

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International Past-Presidents

1974 J. Gay1975 M. Finnegan1976 B. Hedberg1977 M. Okano1978 D. Smith1979 J. Gaudin1980 J. Stonier1981 S. Heijn1982 W. Poms1983 H. Hodding1984 F. Pombo1985 M. Ariga1986 L. Mackey

1987 P. Hug1988 D. Ryan1989 K. Payne1990 J. Portier1991 F. Noetinger1992 A. Mifune1993 L. Evans1994 O. Axster1995 N. Jacobs1996 J. Brown1997 S. Layton Jr.1998 R. DeBoos1999 P. Mandros

2000 H. Goddar2001 E. Shalloway2002 T. Sueur2003 M. Jager2004 J. Gulliksson2005 W. Manfroy2006 P. Chrocziel2007 R. Grudziecki2008 C. Fukuda2009 A. Liberman2010 P. O’Reilley2011 A. Lewis2012 J. Malackowski

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les Nouvellesles NouvellesVolume XLVII No. 4 December 2012


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Advancing the Business of Intellectual Property GloballyIntroduction To Joint OwnershipSun R. Kim AnD VeRA Lipton — Page 250

Joint Ownership In Australia RoDney De BooS AnD timothy CReeK — Page 252

Joint Ownership Of Intellectual Property Rights In AustriaSABine FehRingeR AnD thomAS L. BeReuteR — Page 256

Joint Intellectual Property Ownership: A Brazilian PerspectiveJuLiAnA L. B. ViegAS — Page 260

Questions Of Entitlement In Chile, The Interplay Of Joint Ownership And Public Funding Of R&D In Chile

JuAn FRAnCiSCo ReyeS — Page 265

Joint Ownership Of IP In The Czech RepublicVoJtěCh ChLoupeK — Page 268

Joint Intellectual Property Ownership In GermanypeteR K. heSS AnD miChAeL KoBLeR — Page 271

Some Insights Into Joint Intellectual Property (IP) Ownership In IndiaSuDhiR RAVinDRAn AnD SuBRAmAniAm VuthA — Page 274

Joint Ownership Rights In Israel neiL WiLKoF AnD ADAR oRtAL — Page 277

Joint Ownership Of Patents, Copyrights And Trademarks In MalaysiaBoo Seng ong — Page 281

Practical Reflections On The Co-Ownership Of Industrial And Intellectual Property Rights In Spain

mAnueL De toRReS nAVARRete — Page 284

Joint Ownership Of Intellectual Property Rights In TurkeyomeR hiziRogLu AnD yuCeL hAmzAogLu — Page 287

Joint Ownership Of IP In The UK—Joined Up Thinking Or Just A Little Disjointed? FionA niCoLSon AnD CAtheRine teRRy — Page 290

Joint Ownership Of United States Patents, Trademarks And CopyrightsD. pAtRiCK o’ReiLLey, JuLiA Anne mAtheSon AnD mARgARet A. eSquenet — Page 293

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