The Impact of Co-ownership of Intellectual Property Rights on their Exploitation
Questionnaire published in AIPPI, 2009
Discussion and Questions
I) Analysis of the current substantive law
1) The regulation of co-ownership may depend on the origin of co-ownership. It may be considered that, in case the object of an intellectual right (esthetical, technical or commercial) is jointly created by two or more persons, the rules applicable to such a situation may be different from those applicable in the situation when the co-ownership results from the division of the same right among different persons as the consequence, for example, of heritage or a division of a company. Also, there may be the situations where the co-ownership is imposed in fact by one party on the other in case of some technical creation (for example in case of the improvement or modifi cation of the previous creations which not always may result in the independent right). Therefore, the groups are invited to indicate if, in their national laws, the rules related to the co-ownership of IP Rights make any distinction in the applicable rules to the co-ownership of an IP Right in case the origin of the co-ownership rights is not voluntary but results from other situations, including the division of a right in case of a heritage. In this context the Groups may also indicate if there are any legal defi nitions of co-ownership of the IP Rights adopted in their countries and what these defi nitions are. The Romanian Law does not make any distinction in the applicable rules to the co-ownership of an IP Right and there is no legal definition of co-ownership.
2) A large debate, during the Singapore ExCo, took place with regard to the notion of the exploitation of an IP right. More specifi cally, the groups were highly divided on the issue of outsourcing or subcontracting the exploitation of an IP right. This question, particularly important in case of patents, relates particularly to the problem of subcontracting when a co-owner of the patent who, in principle, and at least according to the position expressed by AIPPI in its 2007 Singapore Resolution, has the personal right to exploit his own part of the patent, specifi cally by manufacturing and selling the goods or processes covered by the patent, needs to subcontract partially or totally the manufacturing of the product covered by the patent. No common position could be achieved by the Singapore ExCo in 2007 on the question if the right to exploit the patent should also cover the right to subcontract, specifi cally the manufacturing of all or part of the invention being the subject matter of the patent.
Therefore, the groups are invited to present the solutions of their national laws on this specific point. The Romanian Rule no. 547 / 21.05.2008 for implementing the Law 64/1991 regarding inventions provides, art. 84 (1,)(2),(4) In case there is no written agreement of the co-owners concerning the exploitation of the patent Each of the co-owners may, to his own benefit, grant a non-exclusive exploitation license to a third party, on condition that an equitable indemnifi cation should be paid to the other co-owners who do not exploit the invention personally or who have not granted an exploitation license. This license could be granted to the subcontractor for manufacturing the product.
3) The working guidelines established for the Singapore ExCo contained also the question related to the possibility of the co-owner of an IP right to licence this right to third parties. No distinction was, however, made in this context between a non-exclusive and an exclusive licence. No differentiation was also made on the number of licences which could be given by one co-owner in case the non-exclusive licence would be permitted by the national law.
And if AIPPI adopted a resolution on the conditions of granting the licence, it also appeared during the discussion at the ExCo that some different or more precise solutions could have been obtained if the Working Committee had made a distinction between the nature of the licence. Therefore, in order to improve the work of the ExCo, the groups are invited to specify how the differences in the nature of licenses (non-exclusive or exclusive) influence the solution of their national laws in respect of the right to grant the licence by a co-owner of an IP Right.
In Romania, for patents, according to the Rule no. 547/21.05.2008 for implementing the Law 64/1991 regarding inventions at art. 84 (5) “An exclusive exploitation license can be granted only with the agreement of all co-owners or according to a fi nal and irrevocable decision of the law court.”
Also at art. 84 (3) of the Rule no. 547 “if there is no written agreement concerning the way of the exploitation of the IP right each of the co-owners, to his own benefit, may exploits his right”.
Designs and Models Law
The same provision is for the designs and models according to the Rule no. 211 of 10.03.2008 for implementing the Law 129/1992 regarding the protection of designs and models to art. 44 (6)” An exclusive exploitation license may be granted only with the agreement of all coowners or according to a fi nal and irrevocable decision of the law court.”
A non exclusive license for designs and models according to art 44(5) “Each of the co-wners may, to his own benefi t, grant a non-exclusive exploitation license to a third party.”
The Romanian trademark law 84/1998 has no provision regarding the co-owners. But such provision has to be settling because of the difficult situations met in practice.
According to art. 5 (3) of the Law 8/1996 on Copyright and neighboring rights the coauthors cannot exploit the work otherwise than by common agreement, failing a convention to the contrary. Denial of consent on the part of anyone of the co-authors shall have to be thoroughly justifi ed. Art. 39(3) provide that the author’s patrimonial rights or those of the holder of the copyright may be transmitted by exclusive or nonexclusive transfer.
4) One of the most diffi cult questions which appeared during the discussion at the Singapore ExCo was the possibility to transfer or assign a co-owned share of an IP right.
And the problem seemed so complicated that fi nally the Working Committee decided to withdraw its proposal for a resolution on this point. In fact, the discussion showed that the solutions concerning the right to transfer or assign may vary since there is a huge variety of situations related to the transfers of the co-owned share. Notably, one could imagine that the transfer is operated on the whole share of the co-owned IP right, but it also could be simply an assignment of a part of the co-owned share, creating therefore an additional co-owner of an IP right. And such transfer of a part of a share of an IP Right could be used to overcome the limitation which could exist on the granting of licences by the co-owners.
The Groups are therefore invited to precise their position on the question of the transfer or assignment of a share of the co-owned IP Right, taking into the consideration the different situations which may occur (the transfer of the whole share of a co-owned IP Right or the transfer only of the part of the share of the co-owned IP Right).
According to art 45 (1) of the Law 64/1991 the right to the patent, the right to grant the patent and the rights granted by the patent may be assigned in whole or in part. The art. 84 (6) of the Rule of implementing the Law 64/1991 regarding Patents provide that each co-owner may, at any time, to assign his own share of the property covered by the patent.
Designs and models law
According to art 44(7) of the Rule no. 211 of 10.03.2008 for implementing the Law 129/1992 regarding the protection of designs and models, each co-owner may, at any time, to assign its own share of the property right covered by the certifi cate.
The Romanian trademark law 84/1998 has no provision regarding the co-owners. But such provision has to be settling because of the diffi cult situations met in practice. The Romanian group’s position is to let the co-owner free to decide if he wishes to transfer only a part or the whole of his share of a co-owned IP rights.
5) The exercise of an IP right co-owned by two or more co-owners each of whom has in principle the right to exploit the co-owned right, may also raise diffi culties from the point of view of competition rules. The co-owned IP Rights may give the co-owners the dominant position on the market and their agreement on the co-owned IP Rights (when for example it prohibits the licensing) may also be seen as eliminating the competitors from the market.
The groups are therefore invited to explain if their national laws had to treat such situations and what were the solutions adopted in those cases. The Romanian laws did not treat such situations.
6) The groups are invited to investigate once more the question of the applicable law that could be used to govern the co-ownership of various rights coexisting in different countries.
This point was left for further study by the paragraph 9 of the resolution adopted in Singapore. And more specifi cally the Groups are requested to indicate if their national laws accept that the co-ownership of an IP Right, even if there is no contractual agreement between the co-owners, may be ruled by the national law of the country which presents the closest connections with the IP Right. If this is the case, what in the opinion of the Groups would then be the elements to take into the consideration to assess this connection? The Groups of the EU Countries are in this context asked to indicate if they consider that Council Regulation of June 17, 2008 (No 593/2008), so called “Rome I” may be applicable to the Co-Ownership agreements. In the absence of any contractual agreement between of the co-owners the Council Regulation so called “Rome I“ is not applicable. The law applicable is the national law where the IP Right it was brought to the knowledge of the public for the fi rst time or registered according to art. 60 and 61 of the Law 105/12.09.1992 on the settlement of the private international law relations. The Romanian law for patents and designs and models have special provisions in this case.
Art. 84 (2) of the Rule for implementing the Law 64/1991 regarding inventions stipulates in default of a written agreement of the co-owners concerning the manner of exploitation of the invention, each of the co-owners may exploit the invention to his own benefi t, with the obligation to pay equitable indemnifi cation to the other co-owners who do not exploit the invention personally, or who have not granted exploitation licenses; in default of an agreement, the indemnifi cation shall be established in the law court according to the civil law.
Designs and models Law
According to art. 44 (4) of the Rule no. 211 of 10.03.2008 for implementing the Law 129/1992 regarding the protection of designs and models in default of a written agreement of the co-owners concerning the manner of exploitation of the designs and models, each of the co-owner may exploit them to his own benefit.
7) Finally, the groups are also invited to present all other issues which appear to be relevant to the question and which were not discussed neither in these working guidelines, nor in the previous ones for the 2007 ExCo in Singapore.
II) Proposal for the future harmonisation
The groups are invited to present any recommendation that can be followed in the view of the further harmonisation of national laws in the context of co-ownership, specifi cally on the points raised by the working guidelines above in relation to the current state of their national laws. Since the Romanian trademark law does not provide special regulations regarding the use of the trademark rights by co-owners, several complex cases have arisen having as an object of dispute the above mentioned use. Therefore, a harmonization of the trademark law in the context of co-ownership is needed by amending it in a similar manner with the patent and industrial design laws as regards to the use of the IP rights by co-owners.