From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 5 September 2013

Moral rights in patent law: oxymoron isn't it?

Just like Nessie, moral rights often come back on the IP stage to perform when you don't expect it. Most of the times this question relates to copyrights. The scope, effective duration and enforcement are some of the questions raised before courts by the “rights that never die” (at least in France).
This topic has already been discussed many times on the IPKat, notably about tattoos, Co-Authorship, or even a traditional ancestral war cry/manly dance.

However, when it comes to patent law there is not much to say and the discussion quite often ends up quickly. As Jeremy recalled:
By Article 4ter of the Paris Convention for the Protection of Industrial Property, "The inventor shall have the right to be mentioned as such in the patent". But there is no right to object to false inventorship and no right to be named as inventor outside the four corners of the granted patent; nor is there any right to be acknowledged as the founding father of a new area of science of technology.

 That is all. Being an inventor is no such things as being an author and you cannot pretend to have any prerogative outside of the patent itself. [Merpel asks: if there is nothing to say, why bother writing a post?]
Ho boy, here come moral rights again!
Well, this GuestKat recently came across a paper made by the delightful and talented Nicolas Bronzo, French KatFriend and IP Lecturer at the Faculty of Law of Aix-en Provence. In his article, published in the propriété industrielle issue of June 2013, Nicolas took a closer look at French regulations and case law where moral rights and inventors had more in common than just a name. This paper is really useful as it gives a refreshing perspective on moral rights in industrial property. This post speaks about the main findings of his work added with some GuestKat opinions.

As a quick reminder, French copyright law provides the author with four principle attributes: right to disclosure, right to paternity/attribution, right to withdrawal and retreat and right to the integrity for protected works. They are codified in Articles L121-1 to L121-9 of French IP Code (CPI). Here is a friendly English version.

If moral rights are usually linked to personality rights, they often differ and step out of this category. Whereas the right to private life is given to every person, moral rights are the legal proof of  the relationship between the author and his work.
The main requirement to get protection from copyright in France is the originality of your work. 
[Is it like novelty wonders Merpel?] Not at all. [Then, how do you know if a work is original?]
Well you look for the imprint of the author's personality on his work. If you can find arbitrary signs of a will to create, than the work as to be considered original, protected by law and therefore the author shall be entitled to moral rights on this work. Simple.
Inventions are treated differently, as if they were not a representation of the inventor’s creativity. How come this would be different? Imagination is also required when inventing. Even if you consider that a patent often protects an invention that will do nothing but a slight enhancement of a previous one, it is hard to contest that an innovation is triggered by a creative process and is imprinted with the inventor personality. Perhaps it is the expression of intelligence rather than personality but still, intelligence is a part of everyone and when expressing your intelligence, you express your personality.

Going further in the comparison between copyrights and patents in French law, the paper emphasizes on the inventor’s paternity right as the main moral right available. Contained in Article L.6119-9 of CPI, paternity right is a direct application of Article 4ter of the Paris Convention, added during the London conference of June 1934. This is basically the only enforceable right owned by the inventor. But an issue may arise when the inventor is an employee. If the employer, legal assignee of the invention decides to keep it secret, the paternity right is dismissed. Here is a clear weakness compared to copyright where economic considerations do not equally prevail. However, right to attribution may find some extensions outside of a patent, for instance in scientific publications, as in the Branly case.

Moreover, domination of employer’s ownership appears in disclosure right. If the inventor is the assignee, he is free to decide when and how to disclose his invention. But in presence of two different persons, the right disappears and the employee even has a legal obligation to not disclose the invention before publication of the patent application.
However, the inventor still has a few bullets. A refusal to disclose the invention does not give right to the employer to obtain an injunction to disclosed, and the inventor may opposed the disclosure made through a patent application if he considers that he has not finished his research and if the disclosure may put at risk the inventor’s reputation.
Last comparison is made with right to integrity. In copyright, the author can oppose his refusal to an exploitation of his work, even in public domain, when he considered it to be distorted, or mutilated. There are no such things in patent law, as scientific progress and innovation are by definition cumulative processes. The inventor may therefore not exclude anyone to from using his invention and transforming it.

However, on the economic exploitation of patent rights, giving right to economic integrity is somehow what Twitter was willing to do last year when they marketed the Innovator Patent Agreement. The idea for twitter was to increase the role given to the inventor during the patent lifetime:
“It is a commitment from Twitter to our employees that patents can only be used for defensive purposes. We will not use the patents from employees’ inventions in offensive litigation without their permission. What’s more, this control flows with the patents, so if we sold them to others, they could only use them as the inventor intended.”
This prerogative given to the inventor is not per se moral right but it is close to what exists in copyright.  Although this move may be worthless since the absence of enforcement takes away a major part of the patent value, it is a fair try to give more importance to the inventor's opinion. As far as this GuestKat knows, the IPA has not attracts many companies.

Does any reader think that inventor's moral rights should be reinforced?


Roufousse T. Fairfly said...

However, right to attribution may find some extensions outside of a patent, for instance in scientific publications, as in the Branly case.

Branly, as in Édouard Branly? Can you elaborate?

The post discusses moral rights as if it were somehow a pure matter of pride and recognition, and eludes the issue of invention ownership and inventor remuneration. Why the separation?

Bertrand Sautier said...

Hi Roufousse,
Yes, this story was related to the same Edouard Branly in a case where an article published about the TSF did not mentioned him as the inventor (Court de Cassation, chambre civil, 27 février 1951). If you read French, I highly recommend you to look at the note made by Carbonnier (D.1951, Chron n°32 p.159).

I skipped the ownership issue because:
A.It has already been discussed many times here.
B.It is a matter of proprietary rights (droits patrimoniaux), not moral rights.

Best wishes

Rimbaud said...

Well, I did not get a chance to read Nicolas Bronzo's paper, but I remember that guy Proudhon, who thought inventors, together with the authors, deserve moral rights instead of proprietary rights.
I was pretty young when he wrote his essay, back in 1863: Les majorats littéraires, examen d'un projet de loi ayant pour but de créer au profit des auteurs, inventeurs, et artistes un monopole perpétuel.
My favourite quote (p.10): "La Révolution est pour nous un brevet d'invention expiré" !
At the exact opposite end, Jobard proposed in 1844 proprietary rights for everybody in Monautopole industriel, artistique, commercial et littéraire.
It looks like their game ended in a draw.

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