Case 11 - Grant-Back and Reach-Through (Public Research Institutions)

Summary

A.1. BASE CASE

After years of in-house research, the large IT-Company (ITC) outsourced its research facilities in the beginning of the 1990s. By now, it contracts not only with its own subdivision but also with a diverse range of universities and public and private research institutions, including spin-offs. ITC contractors are obliged to transfer future intellectual property rights to ITC. In breach of this contractual obligation, Prof. Brain of M-University applies for a patent in the name of M-University. M-University transfers the granted patent to a group of students undertaking a start-up. Can ITC challenge the patent?

A.2. COUNTRY REPORTS

(1) BELGIUM

I. Operative Rules

ITC can claim the transfer of the patent.

II. Descriptive Formants

Article 9 BPA (Art. XI.10 BCEL) states that:

Where an application for the grant of a patent has been made either for an invention unlawfully taken from an inventor or his successors in title or in violation of a legal or contractual obligation, the injured party may, in his capacity as owner, claim the transfer of the application or of the granted patent, notwithstanding all other rights or proceedings.

The BPA does not foresee explicit clauses on commission contracts (e.g. research contracts). Therefore, the specific wording of such a contract is decisive for the ownership of any inventions or patents. Clearly Prof. Brain and M-University applying for this patent are in breach of their contractual obligations, since they were required to transfer all IP to ITC, which can therefore demand the transfer of the application on the basis of Article 9 BPA (Art. XI.10 BCEL).

III. Metalegal Formants

The BPA does not regulate situations of inventions of employees or on commission. This is somewhat strange, since a large majority of patent applications concern inventions made in the context of research carried out in (larger) firms. It is even more remarkable given that these situations are regulated in all other domains of intellectual property rights, for example Article 3 BCA (Art. XI.4 BCEL). The reasons for this lacuna lie in the fact that the obstinate positions of employer and employee organisations could not be reconciled. Given the current legal vacuum, solutions should be sought in contract law and doctrine.