The Day Before Tomorrow

2/2020 25.3.2020

Anne-Mari Lummevuo defended her dissertation “Complex of laws; Interfacing different employment and patent regimes in global inventions – a piece of cake? 29.2.2020, University of Turku.

It feels surreal that this picture where I am standing – relieved after having successfully defended my dissertation – with my opponent Ulf Petrusson and custos Tuomas Mylly, was taken only three weeks ago. I was very stressed the preceding week, not to mention the few hours prior the defence, yet for the very different reasons that humankind is today. Admittedly, Covid-19 existed already at that time, and I was actually a bit worried whether there would be some travel restrictions before my opponent made his way to Finland, but my colleagues said I’m being paranoid, and such changes would not take place in such a short time. Little did we know. The whole world is now closed.

The long journey

Despite of everything, I will try to get back to the moment of the picture above, and write about my journey – a long journey after which the world changed. Indeed, as I started my Lectio Praecursoria, “[t)his has been a long journey. It was initiated already 20 years ago when I started to work in a multinational company on top of global mobile phone development. I didn’t know anything about patents, but I soon learned. I didn’t know anything about international business, but I gradually learned. I also soon learned that knowing the law does not always help you to overcome legal challenges faced in real-life. The written law can hardly ever anticipate all kind of different scenarios that can take place in practice. Especially in question of cross-border cases, despite of extensive harmonization of international law – e.g. at the area of patenting – there are still many areas where purely national laws apply. This came especially true in handling employee inventions raised from cross-border collaboration, where co-inventors originated from different countries. In practice this meant that multiple national laws in respect of a single invention applied, which was not in all cases straight-forward situation. Instead, simultaneously complying with all the relevant laws was quite complex. It was then when practical field research for my dissertation “Complex of laws; Interfacing different employment and patent regimes in global inventions – a piece of cake?” – started.”

Topical topic

Quite conveniently, in last December there was an article in IPRInfo based on WIPO report, proving how topical my dissertation is. 2019 edition of World Intellectual Property Report, published in November, analyzed millions of patent and scientific publication records across several decades to conclude that innovative activity has grown increasingly collaborative and transnational. According to WIPO Director General Francis Gurry, ”[t]oday’s innovation landscape is highly globally interlinked. Increasingly complex technological solutions for shared global challenges need ever larger and more-specialized teams of researchers, which rely on international collaboration. It is imperative that economies remain open in the pursuit of innovation.” (Few months later, the last sentence does not fit very well to the current global situation. However, business still needs to be run, and cross-border collaboration using modern technologies does not require physical contacts.)

Indeed, world has globalized and companies transnationalized. As a result, also inventive activities in multinational companies often take place in cross-border collaboration. However, in addition to the technological solutions raised therein being complex, also the company’s legal and operating framework has become such. My thesis provides a comprehensive overview of related legal challenges and potential pitfalls that a multinational company in securing inventions made by its employees may confront, covering the whole process from ensuring rights to the inventions to securing them as company assets by patenting. Case examples provide a valuable practical insight into recognizing potential conflicts beforehand as well as examples of solutions assuring compliance.

Complex of laws

The term “complex of laws” refers to the mentioned situations which take place in cross-border collaboration within a multinational company where an invention is the joint effort of multiple contributors originating from different jurisdictions. In these situations, arising conflicts of law are not traditional conflicts of laws, where ultimately one law applies. Instead, the company must comply with all the conflicting or mutually exclusive national laws in order to secure valid entitlement to and global patent protection for the invention in relevant markets.

The starting point for the thesis is a technology company operating in a global business wherein patents play a significant role and inventions made by employees (and subcontracted inventors) are valuable assets for the company. Valid entitlement is an essential prerequisite for a company seeking patent protection for employees’ inventions, and it is important for multinational companies with global operations to be aware of and to comply with the variety of regulations in the different jurisdictions. However, it is not sufficient for a company to merely ensure the necessary rights to inventions mad by company employees. There also needs to be effective securement of the inventions, in the thesis by patenting. Company’s patents need to be truly valid, for them to be capable of being utilized in value creation processes such as licensing. The validity in the thesis does not refer to general requirements of patentability but to compliance with special national security provisions, through which individual countries control, and in some cases can even prohibit, the export of certain technologies in the form of patent filings outside their national boundaries.

Accordingly, the thesis provides comparison of different legal regimes in respect of acquiring rights to the employees’ inventions. A specific aspect constituting valid entitlement in certain regimes is the compensation to be paid for the rights to the inventions. Secondly, the thesis introduces the variety of so-called national security provisions, with which countries can set a requirement for a patent application for an invention made within their territory or by a resident inventor therein to be filed first within the respective country. Thirdly, as the main dilemma of the research, the thesis explores the complex of these laws to be simultaneously applied and complied with in situations arising from cross-border collaboration. As the thesis shows, it is not always a piece of cake.

When (almost) all the flowers have gone

The picture of my “flower desk” was taken the day after defence. As beautiful the flowers were, and as much they provided me joy and reminded of the fabulous day and all those people who were there to celebrate that, unfortunately they do not live forever. Thus, heavy-heartedly, I had to put them away after 3 weeks. Somehow it was so symbolic to this global situation we are facing at the moment.

However, it seems that similarly to every cloud having a silver lining, roses seem to have golden one. Namely, the white rose (the picture is taken 3 weeks after the big day) still tries to flourish and show that despite of these difficult times the world is confronting, there is hope.

Kannen kuva: Felix Mittermeier, Unsplash