EU-China Workshop
on the Chinese Patent Law
24./25.09.2008
Topic II: Co-owned rights
Prof. Dr. Christian Osterrieth
www.rokh-ip.com
Overview
I.
II.
III.
IV.
V.
Emergence of co-owned rights under German Law
Statutory provisions regulating co-ownership
Influence on licensing co-owned rights
Influence on enforcement of co-owned rights
Way out: Contractual arrangements
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I. Emergence of co-owned rights under German Law
• Original co-ownership according to § 6, 2nd
sentence German Patent Act (PatG):
– “If more than one person have jointly made an
invention, the right to the patent shall belong to them
jointly.”
– i.e. Co-invention leads to co-ownership
• especially Co-inventions because of R&D-Projects
• Subsequent co-ownership because of a joint
acquisition of a patent by more than one party
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II. Statutory provisions regulating co-ownership
• General principle: The relationship between co-owners
of a patent is governed by the contractual provisions
between these parties
• Lacking such contractual relationship the co-ownership
is deemed as a so-called co-ownership at fractions
(Gemeinschaft nach Bruchteilen) in according with
Sec.741 et seqq. German Civil Code (BGB)
– every co-owner is in principle entitled to make full use of the
patented invention (see Sec. 743 (2) BGB), without an obligation to
compensate (e.g. royalties) the other co-owners (cf. Federal
Supreme Court, X ZR 152/03 = GRUR 2005, 663 –
Gummielastische Masse II)
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II. Statutory provisions regulating co-ownership
cont’d
• the Federal Supreme Court thereby ruled against a longstanding
prevailing different opinion allowing compensations to the other coowners
• however, even under the new case law every co-owner is allowed to
claim a reasonable use balancing the interests of all co-owners
(Sec. 745 (2) BGB) and upon such a request compensation might
be justified – the new case law therefore did not change the general
rule but only imposed a formal requirement by insisting on an
explicit request for compensation of the co-owner
• furthermore, according to Sec. 743 (2) BGB the use of one coowner must not be excessive in way precluding the other co-owners
from their use of the patent – whether there are situations in which
this rule could apply is debated
– every co-owner is entitled to assign its fraction on the coownership to a third party, but not to assign the patent as such
(Sec. 747 BGB)
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III. Influence on licensing co-owned rights
• Because every co-owner is only entitled
to its own fraction but not to the patent as
such, licensing of the patent depends on
the consent of all co-owners
– this principle applies to all kinds of licenses,
i.e. it does not matter whether “only” a nonexclusive license is to be granted or an
exclusive one
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III. Influence on licensing co-owned rights
cont’d
– in cases of non-agreement between the co-owners
there are only three possibilities to handle this
situation
1.maintaining the status quo, i.e. no licensing at all
2.assigning the fraction to the third party (cf. above) = the
assigning co-owner will loose its right to use to the third party
that becomes the new member of the co-ownership at
fractions
3.Termination of the co-ownership at fractions which would
lead to an auction of the patent whereby the revenue will be
divided between the former co-owners (Sec. 753 BGB) =
every co-owner will loose its right to use, assumed that it
does prevail in the auction
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IV. Influence on enforcement of co-owned rights
• Every single co-owner has an own standing to
sue, i.e. every single co-owner is entitled to
enforce the patent (Sec. 1011 BGB)
- it is not necessary that all co-owners consent on the
enforcement, which means that a co-owner who does
not agree with the enforcement has no direct means
to stop proceedings initated by another co-owner
• One indirect possibility could again be Sec. 745 (2) BGB
granting the right to claim a reasonable use balancing the
interests of all co-owners (cf. above); however - if at all - this
would only work in extremely rare cases because the
interests of the suing co-owner would have to be considered
as well
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IV. Influence on enforcement of co-owned
rights cont’d
- the acting co-owner has to claim the rights for the
benefit of the co-ownership at fractions, e.g. it is not
allowed to claim payment in the own name
• Every single co-owner is entitled to defend the
patent in nullity proceedings (Sec. 744 (2) BGB)
- nevertheless, the nullity action has to be directed
against all co-owners, it is not sufficient to sue only
one
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V. Way out: Contractual arrangements
• The statutory regime leads to many problems in either
way, therefore in practice the conclusion of contracts
between the co-owners regulating their relationship with
respect to the co-owned patent prevail
• However, in cases of patents for the same invention in
many different countries even the contractual solution
raises difficult questions, especially regarding the
governing law and the admissibility of certain terms
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