The conflict of laws -doctrine is also referred to as private international law. It is used as a problem-solution approach in a variety of situations where the legal situation to be solved involves two or more relevant jurisdictions, and it is supposed to define which jurisdiction should be applied in each case. The function of private international law is said to be complete when it has chosen the appropriate system of law. However, this thesis aims to explore such scenarios where two or more laws regulating the rights to and patenting of inventions made in an employment relationship simultaneously apply, and do not necessarily lead to an actual conflict of laws. Does private international law, which is meant to assist in determining which law to apply in cases involving a foreign element, provide answers also in situations where several different laws need to be complied with, without an option to choose only one law to apply? The answer is no. Private international law may direct the applicant to choose the correct laws to be applied to the case at hand but leaves open how to comply with them all simultaneously. This thesis introduces one possible
approach to consider an invention to consist of several parts, the contributors of which are separate parties to the legal dispute in question. The employer, or several of them in the case that the invention has been made in collaboration with a third party or parties, is the counterparty to whom the rights will eventually be vested from the inventors. Private international law shall then determine the law to be applied separately for each part of the invention, in the relationship between the respective employer and the inventor. The choice of law is made based on alternative options such as the domicile of the employing company, the nationality of the employment relationship of the inventor in question, or other relevant factors. By using this approach, namely dividing the invention into several parts even if it is a question of only one invention to which the employer would acquire rights to and seek patent protection for, it is more appropriate to apply private international law in determining the relevant laws to be applied. However, when it comes to patenting inventions and trying to comply with several national security provisions at the same time, the invention cannot be patented in pieces, based on individual contributions.
Figure 4. Complex of laws in securing patent protection for global inventions in MNCs.
Indeed, as illustrated in the Figure 4, the global invention could be imagined as “a cake” where the contributions by the individual inventors are the pieces of the cake to which the employer should acquire the rights. Acquisition of the rights to an employee invention is an individual action. When the invention is a joint effort of
two or more inventors, the employer needs to act according to the requirements of the law in respect of each of the individual inventors. This makes it possible to simultaneously apply the different laws and rules applicable to the inventors, in theory. In practice applying different mechanisms in acquiring the rights to the very same invention requires careful coordination and knowledge of the different regimes, which is not necessarily the case with local patent engineers handing the invention reports at the patent department. Therefore, there needs to be a monitoring system or policies guiding the procedures in order to ensure compliance with all the relevant laws. The optimum would be to achieve a holistic procedure which would sufficiently address the national differences and requirements in such a way that the procedure in acquiring the rights would comply even with the strictest legal requirements that may be applicable to the individual co-inventors.
Acquisition of rights is an individual action but when protecting the “cake”, it cannot be sliced and patented in pieces, according to each applicable national security provision. The invention, even if the compliance of several national security provisions is required, needs to be patented as an entity, yet without violating any of the provisions. In situations where multiple national security provisions apply, it may be required that the first patent application is to be filed in multiple places. This, in turn, requires some legal strategy as the first patent application can be filed only once, and only in one place. The case examples in this thesis are based on established industry practice and provide a problem-solution approach to this dilemma, too.
Petrusson writes about monitoring systems in the context of value creation. The discourse and creative efforts to grasp the complexity of intellectual capital has resulted in a number of monitoring systems, such as “intangible asset monitor” and “balance scorecard”. These models have the purpose of helping the firm understand and follow the processes that generate their assets.139 The aforesaid relates to the context of value-based management with pre-existing intangible assets, for example, in the form of intellectual property. However, similarly in the context of this thesis, the monitoring of compliance is necessary to create intellectual property in such a way that the resulting intangible assets end up being truly valid, namely durable assets. Without this prerequisite no value can be created out of the assets, as the static property right is a necessary precondition in order to claim a dynamic property
139 Ulf Petrusson, ‘Intellectual Property & Entrepreneurship, Creating Wealth in an Intellectual
Value Chain’, CIP Working Paper Series, Center for Intellectual Property Studies, Chalmers
University of Technology, Göteborg, Sweden, 2004, p. 51. In connection of the first term Petrusson refers to e.g. Kar Erik Sveiby, ‘The New Organizational Wealth’ (1997) and regarding the latter term to Robert S. Kaplan and David P. Norton, ‘Why Does Business Need a Balanced Scorecard?’ (1996) 1(1) Journal of Strategic Performance Management (Feb-March 1997), pp. 5-11.
right.140 This thesis aims to build such a procedure to the management of the complex of laws that ensures subsequent value creation out of IPR. Company management quantifies the time and the economic resources to be spent in protecting its IP, in order to define the entity of the rights relating to the assets, regardless of the strategy of use to be created. Companies that classify, protect and assess their IP are able to implement strategies to achieve their objectives in shorter periods of time. 141
140 Ibid., p. 119.
141 Rosa Lombardi, et al., ‘Modern Trends for Strategic Use of Intellectual Property Rights: Dynamic IP Portfolio Management, Open Innovation and Collaborative Organizations’, in Demetris Vrontis (ed), Managing Globalisation: New Business Models, Strategies and