Initial Title to Employee's Invention : Japanese Experience and International Trends (Teisė Į Tarnybinį Išradimą: Japonijos Patirtis Ir Pasaulinės Tendencijos) (in Lithuanian)

This article analyses the question of initial ownership to patents. Conventionally, intellectual property rights have been considered as limited territorially. Nevertheless, the increase of cross-border exploitation of intellectual property assets reveals shortcomings of the principle of territoriality and lex loci protectionis. This article begins with a closer analysis of the principle of territoriality and the principle of lex loci protectionis and introduces normative criticism based on the theory of new institutional economics. It is argued that new institutional economics might provide insightful considerations to substantiate inefficiency argument which is often invoked as a criticism of territorial understanding of IPRs. On a descriptive level several Japanese landmark court cases (Yonezawa v Hitachi and Nakamura v Nichia). In these cases the employer applied for patents not only in Japan, but also a number of foreign countries. Such foreign applications raised the question which law should be applied to the determination of the initial ownership to the patents. Following the strict territoriality approach, the law of each country where patent application was filed should also determine the initial owner of a patent. Such solution leads to considerable uncertainty especially from the viewpoint of the parties. In order to reduce legal uncertainty in cross-border exploitation of intellectual property assets, the author of this article proposes to allow parties' agreement as to the question of initial title. Even though party autonomy might raise some sovereignty issues, it is nevertheless proposed to allow party autonomy at least in complex cases. It is argued that party autonomy would assure that the same person will hold title to an intellectual property asset. Besides, it is argued that the principle of party autonomy may have important harmonizing effects especially having in mind possible difficulties of having an international agreement on the question of initial title. Besides a closer analysis of Japanese law, this article also dwells upon the relevant provisions in the European Patent Convention, Rome I and Rome II Regulations as well as more recent legislative proposals of comprehensive framework for cross-border exploitation of intellectual property rights (the ALI Principles, Max Planck Principles and so called "Transparency Principles" presented by Japanese legal scholars)