On March 28 2012 the new Federal Patent Court handed down a decision on the ownership of inventions created with the involvement of universities.(1) While most current federal and cantonal laws address the ownership of such inventions, until recently many did not. The decision will thus remain important for a number of years. Moreover, it touches on several issues that parties collaborating with Swiss universities should be aware of.
In the late 1980s a professor of the University of Berne, in collaboration with another individual, developed an invention consisting of a medical device for the fixation of the spine. The employer of the other individual filed a patent application for the invention, which was subsequently granted. The university claimed, among other things, that:
- it was the joint owner of the invention; and
- the third party had filed the patent application in bad faith.
The Federal Patent Court held that the university was not the (joint) owner of the patent, despite the fact that the professor participating in the invention had worked regular working hours and used the university's facilities for his contributions to the invention. The reason for the court's finding was that there was no cantonal law conferring the rights of the professor to the university (contrary to what is stipulated in the Code of Obligations for employees of private businesses and, currently, in many federal and cantonal university laws).
Further, the court found that the third party did not apply for the patent in bad faith, since:
- the third party had, through its employee, rightfully learned of the invention;
- the third party was under no obligation to keep the invention secret (which obligation could, for instance, have arisen out of a non-disclosure agreement or similar agreement); and
- the university had no intention to file a patent application itself.
The following lessons can be learned from this case:
- When participating in research and development (R&D) projects involving Swiss universities, the legal background applying to the particular university must be assessed in depth and the contractual framework requires careful drafting.
- Be cautious in transactions if IP ownership of the adverse party is a material issue and if such intellectual property was developed in collaboration with Swiss universities. This may require a thorough analysis of which laws were applicable at the time of the invention and at the time of the filing of the patent application.
- In joint R&D projects under Swiss law, the outcome is often joint ownership in the IP rights developed. Unless the parties agree on a different ownership regime, the parties are well advised to contractually set forth the rules governing their joint ownership.
- Finally, in joint R&D projects, it is advisable to use tools such as checklists and IP protocols, in which the parties agree occasionally on the rights so far developed and their ownership and exploitation.
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