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Who missed the time-limit?

November 2011 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

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A Danish university was not liable for damages although it decided too late not to commercially exploit an invention made by one of its research scientists. For the research scientist himself should have tried to avoid his loss.
With statute law in hand, public research institutions can demand assignment of the rights in any inventions made by their research scientists. In return, the research institutions must try to commercialise the rights. But what obligation does a university have to a research scientist if it decides not to patent and commercialise his invention? This issue was put before the Danish Eastern High Court in a recent case.
A research scientist at a Danish university had invented a device which was supposedly capable of determining patterns of electric currents in muscular cells. The university thought the invention was worth commercialising because it could probably, among other things, help analyse some of the effects of taking medicine. The university therefore decided to claim the rights in the invention.
The university had an international patent application prepared, which was filed with the European Patent Office. But the EPO would not grant a patent on the invention because it lacked novelty over another patent application.
Since there were apparently also problems with convincing private investors of the commercial potential of the invention, the university decided not to exploit the invention after all and to hand back the rights to the research scientist.
Too late, but …
The university issued a notice of reassignment dated 28 November 2008 to the research scientist. Regardless of the negative EPO decision on the patent application, the application could still be filed nationally – for instance, in the US or in individual European countries. In that case, however, the US authorities had to be notified already on 1 December 2008 and the European and Australian authorities on 31 December 2008.
The research scientist let the two dates pass because he thought there was not enough time to act. Later on, he sued the university for damages, claiming that the university had failed to give him enough time, along with a number of other mistakes on the part of the university.
The university did not believe its actions had given rise to liability. The case therefore ended up in the district court, which ruled in favour of the inventor.
On appeal, the High Court ruled that the university had incurred liability because it had handed back the rights to the inventor so late that he had in effect been precluded from filing a national application – at least with respect to the US.
At the same time, however, the Court held that the inventor should have tried to use an exemption in US patent law, which allows a patent application that has been filed too late to be restored in certain circumstances.
Norrbom Vinding notes:
  • that the case shows that it may be more difficult for public research institutions than for private companies to protect and commercialise employee inventions because private companies often have a better grasp of the technical aspects of such inventions and a better sense of their commercial potential from the outset; and

  • that, with the judgment, the High Court must be said to place a heavy burden on employee inventors if the judgment is to be taken as meaning that a time-limit of about 1 month was sufficient for the inventor to study and understand the scope for a national continuation of the patent application in, for instance, Europe and Australia.
The above does not constitute legal advice and should not be relied upon as such

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