Question
Article 35 in Japanese IP law allows a company to claim a free non-exclusive license from a patent obtained by an employee if the patent is in the scope of the company’s business. If the employee files a patent while at the company, but the patent is granted after the employee leaves the company, is the company still entitled to a license?
Answers: 1 public & 0 private
According to Paragraph 1 of Article 35 of the Japanese Patent Law, employee invention includes an invention achieved by by an act(s) categorized as a present or "past" duty of an employee. The timing of an invention is determined based on the creation and completion of the invention.
For example, if the invention is only inspired when the employee belongs to Company A but is actually created when he/she belongs to Company B, only Company B is entitled to a free non-exclusive license(A judgment made by the Nagoya Regional Court on 1996.9.2). If the invention is in the process of creation while at Company A and is completed while at Company B, both Company A and B are entitled to a license.
If the employee files for a patent while at Company A, it is assumed that the invention is completed while at Company A. Therefore, regardless of when the patent is granted, Company A is entitled to a license.
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