In the judgment, the Danish Maritime and Commercial High Court has addressed what it takes to qualify as a co-inventor under Danish law.
Background
Olin is a global manufacturer and distributor of chemical products, including epoxy, and supplies epoxy to Vestas for use in the production of wind turbine blades.
The dispute concerned 11 international patent applications filed by Vestas and one granted US patent. Olin claimed that the patent rights were based, at least in part, on knowledge and results developed jointly by the parties as part of a collaboration between them.
The Court’s findings on co-inventorship
The judgment addresses the criteria for co-inventorship under Danish patent law. The Court stated that, in order to be regarded as an inventor or co-inventor, a person must have made an independent intellectual contribution to the invention. The contribution must not be entirely insignificant and may, for example, consist of being the originator of the idea behind the invention. The Court also emphasised that a contribution consisting of prior art cannot form the basis of co-inventorship.
The Court further stated that an inventor or co-inventor, or a person deriving rights from such a co-inventor, may claim ownership or partial ownership of a patent application or a granted patent filed by another party if the application is based on knowledge acquired in circumstances where the rightsholder could reasonably expect the applicant to respect the rightsholder’s rights in the invention. According to the Court, this has been recognised in particular in cases where the parties have collaborated, and the collaboration has led to the invention for which patent protection is sought.
Applying these criteria, the Court found that Olin’s employees had made independent intellectual contributions to the inventions contained in the patent applications.
The Court held that these contributions were reflected in all of the disputed patent rights, including in a patent application where the contribution was reflected in the description but was not part of the claims.
A judgment of great significance
The judgment is significant as it confirms the criteria for co-inventorship under Danish law and illustrates how those criteria may apply where patentable technology has been developed in a collaborative research project.
For undertakings involved in R&D collaborations, the judgment underlines the importance of carefully documenting and specifying all contributions as well as agreeing on clear guidelines for ownership, patent filings and the handling of jointly developed inventions.
We acted for Olin in the proceedings.
To read the judgment, click here (in Danish).
The judgment is subject to appeal.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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