6

Recognition of Joint Inventors and the Place of Invention inInternational Joint Research Projects

In recent years, researchers have come to carry out joint research activities without
geographical restrictions due to the progress of information and communication technology. Thissituation is considered to be dramatically improving the efficiency of R&D. However, for cases
where researchers in multiple countries jointly complete an invention, two problems have been
pointed out from the viewpoint of operation of the patent system. One is the problem that, if thestandards for recognition of joint inventors differ among countries, the patenting procedure, etc.
may become extremely complicated. The other problem is the question of which country is to be theplace of invention. In a country that obligates an applicant filing a foreign application to have filed
the first application in that country, this question will be an important determination factor whencomplying with such obligation. In this study, a survey was conducted in seven countries (including
Japan) on statutory laws and regulation, trial decisions by administrative organs, guidelines, court
judgments, case examples and academic theories concerning recognition of joint inventors and theplace of invention in international joint research projects. The survey results were organized,
analyzed and summarized by country, and the points to be noted by Japanese researchers
conducting international joint research projects were identified.

I

Introduction

In recent years, due to the progress of
information and communication technology,
researchers have come to carry out joint
research activities without geographicalrestrictions under an environment where
information is distributed freely acrossnational
borders.
Suchsituationisconsidered to dramatically improve theefficiency of R&D and contribute to thedevelopment of industry. However, two
problems have been pointed out from theviewpoint of operation of the patent system.
One problem is that, in cases where
researchers located in multiple countries
jointly complete an invention, if thestandards for determining the persons
recognized as joint inventors differ among
countries, the patenting procedure andpatent enforcement may become extremelycomplicated. The other problem is thequestion of which country is to be the place of
invention for an invention that is jointly
completed by researchers located in multiple
countries. In a country that obligates anapplicant filing a foreign application to have●

IIP Bulletin 2008

filed the first application in that country, thisquestion will be an important determination
factor when complying with such obligation.
Thus, in this study, a survey was
conducted on statutory laws and regulations,trial decisions by administrative organs,guidelines, court judgments, case examples
and academic theories concerning recognitionof joint inventors and the place of invention
in international joint research projects, inJapan, the United States, Germany, theUnited Kingdom, France, China and South
Korea. The survey results were organized,
analyzed and summarized by country, andthe points to be noted by Japanese
researchers conducting international joint
research projects were identified.

II

Joint Inventors

Section1
summarizes
matters
concerning the definitions of inventors andjoint inventors, recognition of joint inventors,
and application of foreign laws on acountry-by-country basis.
In cases where a patent application
procedure is carried out while there is an
42 ●unnamed inventor due to a mistake in therecognition of inventors, the following points
should be noted:- One of the points is the presence or absenceof provisions permitting the Patent Office torefuse an application or invalidate the patent
when an application has been filed with a
mistake in the recognition of inventors. This
point is summarized in Section 2.
- Another point is whether or not anapplication could be refused or a patent could
be invalidated on the basis of any
inconsistency between the persons who havethe right to obtain a patent and theapplicants. This point is summarized in
Section 3.
- There is also a point of whether or not a
joint owner of a patent may institute a
lawsuit against exploitation of the invention,patent licensing, transfer of a share of thepatent right, or patent infringement,
independently without the consent of theother joint owners, when no agreement exists
between the joint owners. Since the unnamed
inventor has the right to obtain a patent,
there is a possibility that he/she will be
added to the applicants or will receive
transfer of a share of the patent right after
the patent right has been granted. Also, since
the applicants had not recognized theunnamed inventor as an inventor at the timethat the application was filed, it is very
unlikely that the applicants and theunnamed inventor have concluded a joint
application contract or the like between them.
This point is also summarized in Section 3.

1

Recognition of joint owners

For all countries surveyed, the major
view was to apply the laws of the homecountry instead of foreign laws to recognitionof inventors when establishing a patent right.
Also, no provisions of patent law or otherlaws, case law or court judgments were foundconcerning recognition of joint inventors ininternational joint research projects.
As for the definitions of inventors andjoint inventors, requirements for recognition,and recognition methods, it seems to be●common to all of the countries surveyed thata mere assistant, advisor or fund provider ora person who merely gave orders would not
be recognized as a joint inventor, but there
seems to be no unified viewpoint that could
be used in practice.
Therefore, recognition of joint inventors
in international joint research projects would
have to be carried out in each country where
the application is filed and the patent isgranted, in accordance with the statutory law
and case law of that country.
The key points on recognition of joint
inventors in each country are indicatedbelow.
(1) Japan
Academic theories are divided between atheory that regards an inventor to be only anatural person who has truly made aninvention and who has actually taken part in
the act of creating said invention, and atheory that regards an inventor to be a
person who has completed a specific technicalmeans stated in the patent claims.
Meanwhile, there are various academic
theories and court holdings concerning
recognition of joint inventors, and one cannot
make a sweeping generalization of therequirements for recognition of joint
inventors under the current situation.
However, the past court judgment canroughly be divided into 1) cases where thecourt determined the inventorship from theviewpoint of his/her involvement in thecharacteristic features of the invention and2) cases where the court determined theinventorship from the viewpoint of the timethat the invention was completed.
(2) United States
There is a view that the inventor is the
person who conceived the subject matter atissue, as recited in a claim or otherwise.
According to case law, conception is “theformation in the mind of the inventor of adefinite and permanent idea of the complete
and operative invention.”With regard to recognition of the inventor,
there is a view stating that the question of
43 ●IIP Bulletin 2008

whether an invention is deemed to have been
completed at the time the invention wasconceived or it is deemed to have been
completed only when it has been reduced topractice, is irrelevant, and that only the
person who devised the subject matter of theclaims is deemed to be the inventor, withjoint inventors being required of at least
some quantum of collaboration or connection.
(3) Germany
Case law adopts a view that there arethree crucial elements for recognition of an
inventor.
The
firstelementistheunderstanding that only the human being,
who developed the gist of the invention bymeans of a creative act, can be an inventor.
The second element is that the invention
must be communicated. The third element isa creative contribution to the invention. The
creative contribution means a contribution
exceeding the ordinary skill of the person
skilled in the art.
(4) United Kingdom
An inventor is the actual devisor of theinvention. There is a case law that focuses on
creation of the concept of the invention, thatis, conception of the invention, as therequirement for recognition of the inventor,
while there is also a case law that focuses on
not only the conception at the basis of theinvention, but also its reduction to practice.
Not many court judgments discuss issues
concerning the mode and extent of thecontribution to invention that are required
for recognition of a joint inventor. Thus, there
is a view that the inventors are recognized ona case-by-case basis at the discretion of thecourt judge, since no precise standards are
specified in statutory law or case law.
(5) France
There is a view that an inventor is aperson who had successfully conducted
research to find the technical means forsolving a technical problem and/or who
participated in finding these technical means
to be implemented to solve that technicalproblem.
●

IIP Bulletin 2008

There is a view that, to be recognized asa joint inventor, a person must have indeed
participated in finding the technical means
for solving the technical problem at the basisof the invention by having a real personal
contribution to the intellectual and practical
determination of this technical means, but
not only by merely executing instructions
given by another person or by only using
his/her know-how.
(6) China
An inventor as referred to in the Patent
Law is a person who has made a creative
contribution to the substantive features of
the invention-creation. There is a court
holding indicating that joint inventors arerecognizedthroughthefollowing
determination procedure in judicial practices.
Firstly, the extent of contributions to theachievement provided by the persons who
participated in the invention is determinedbased on facts. Such contributions include
selection of the theme, submission of devices,and submission of ideas that involve
inventive steps and ideas on specific modes
for carrying out the invention.
Secondly, by comparing the extent ofcontributions provided by all persons who
participated in the research, the person who
made a creative contribution to thesubstantive problem solving is determined tobe the inventor. If two or more persons havemade creative contributions, they are allconsidered to be joint inventors.
With regard to the former of the twoelements above, persons who are not related
to the invention-creation based on therequirements for the invention-creation shallbe excluded. As for the creativity of invention
in the latter, the invention-creation musthave substantive features, and such
substantive features must be such that there
are substantive differences, which can be
imagined in association by persons skilled in
the art, between the technical features of theinvention-creation and prior art. Persons who
have made creative contributions include
persons who have submitted the idea of theinvention and related specific technical44 ●devices.
(7) South Korea
An inventor is defined as a person who
has created technical matters using the rulesof nature.
There are guidelines stating that, inorder to be joint inventors, each joint
inventor must have made beneficial
contributions to the completion of theinvention
throughtechnical
mutualcomplementation at least in one part of theprocess of completion of the invention. In
addition,
specificcase
examplesofrecognition are provided in the standards forrecognition of joint invention in employees’
inventions.

2

Naming of the inventors in the patentcertificate, etc.

All of the countries surveyed haveprovisions to the effect that the names of theinventors should be published in the patentcertificate or the patent gazette, andprocedural provisions stating that the namesof the inventors of the invention in question
should be indicated in the application.
Only the United States has a system
where an application is refused or the patentis invalidated based on a mistake in thenaming of inventors. In the United States,
provided that the mistake in the naming of
the inventors has occurred without deceptive
intention on the part of the mistakenly
named or unnamed inventor, and with theconsent of all of the inventors and transferees,
the mistakenly unnamed inventor may be
added to the list of inventors or the
mistakenly named inventor may be deleted
from the list of inventors. If such correction is
made, the patent will not be invalidated.

3

Legal relationships between inventors

Among all the countries surveyed, Japan,
China and South Korea seem to be the only
countries that have a system whereapplicants are obligated to file a joint
application when two or more persons jointly●

own the right to obtain a patent, and a failure
to comply with this obligation leads to refusalof the application or invalidation of thepatent.
The countries do not have a unified
system, but do have systems with theirrespective characteristics with regard towhether or not a joint owner of a patent may
independently institute a lawsuit seeking
exploitation of the invention, licensing to athird party, or an injunction against a third
party or transfer his/her share of right to athird party, when the patent right is jointly
owned. Roughly divided, the countries thathave detailed provisions concerning acts
conducted independently by a joint owner of apatent are Japan, the United Kingdom,France, China and South Korea, while thecountries that do not have such detailed
provisions are the United States andGermany.
The key points for each country are indicatedbelow.
(1) Japan
There are provisions on an obligation to
file a joint application when the right toobtain a patent is jointly owned. When theseprovisions are not met, the application will berefused or the granted patent will be
invalidated.
The
PatentAct
providesthat
amendments concerning the applicants may
be made while the application is pending
before the Patent Office.
There are court judgments holding that ademand seeking transfer of a share of a right,
made after the grant of the right, by a person
who had the right to obtain a patent is not
accepted in the case of a misappropriatedapplication.
As acts that a joint owner of a patentright may conduct independently withoutobtaining the consent of the other joint
owners when the patent right is jointly
owned and no agreement exists between the
joint owners, the Patent Act provides for“exploitation of the invention” and academic
theories indicate “institution of lawsuits.” As
acts that require the consent of the other
45 ●IIP Bulletin 2008

joint owners in the same case, the Patent Act
provides for “licensing” and “transfer of ashare of the patent right.”(2) United States
Since an application must be filed by theinventors, there are no provisions obligating
the persons who have the right to obtain apatent to file a joint application when theright to obtain a patent is jointly owned.
There is a view that, when a patent rightis jointly owned, a joint owner of the patent
may not grant an exclusive license to third
parties, nor institute a lawsuit in actuality,
without the consent of the other joint owners.
There is a view that a joint owner of a patentmay independently exploit the invention,
grant a non-exclusive license, or transfer ashare of the patent, without the consent of
the other joint owners.
(3) Germany
There are no provisions obligating thepersons who have the right to obtain a patent
to file a joint application when the right toobtain a patent is jointly owned. However,when a person who has the right to obtain apatent is not named as an applicant, it ispossible to file a legal action for adding such
unnamed person to the joint applicants or, if
the patent has already been granted, file alegal action seeking transfer of his/her shareof the joint ownership.
There is a view that, when a patent rightis jointly owned, a license may be only
granted jointly, and institution of a lawsuit
and transfer of a share of a patent may be
carried out independently without theconsent of the other joint owners.
(4) United Kingdom
There are no provisions obligating thepersons who have the right to obtain a patent
to file a joint application when the right toobtain a patent is jointly owned. However,when a person who has the right to obtain apatent is not named as an applicant at thetime of the filing, it is possible to make anapplication to the Court or Patent Office todecide on the issue of ownership.
●

IIP Bulletin 2008

The Patent Act provides that, when apatent right is jointly owned, a joint owner
may independently exploit the invention andinstitute a lawsuit without the consent of theother joint owners, but he/she must obtainthe consent of the other joint owners to granta license or transfer a share of the patent.
(5) France
There is a view that, when the right toobtain a patent is jointly owned, and a joint
owner of the right to obtain a patent is notnamed as an applicant or an owner of thepatent, such joint owner may demand aprocedure to transfer his/her share of theright.
There are provisions stating that theconsent of the other joint owners is not
required for exploitation of the invention,
grant of a non-exclusive license, institution ofa lawsuit and transfer of a share of thepatent. However, there are also provisions
stating that a joint owner may independently
exploit the invention or grant a non-exclusive
license, but must equitably indemnify theother joint owners who do not exploit theinvention or who have not granted a
non-exclusive license, and with regard totransfer of a share of the patent, the otherjoint owners will have a pre-emption right.
(6) China
There are provisions on an obligation to
file a joint application when the right toobtain a patent is jointly owned. When theseprovisions are not met, the patent application
will be deemed not to have been filed, or
notification of an order of amendment
requesting transfer of a share of the right
will be sent.
There are no express provisions onwhether or not a joint owner may exploit theinvention without the consent of the otherjoint owners when a patent right is jointly
owned. There are provisions stating that theconsent of the other joint owners is requiredfor granting a license, and there is a viewthat the consent of the other joint owners is
required for transfer of a share of the patent.

46 ●(7) South Korea
There are provisions on an obligation to
file a joint application when the right toobtain a patent is jointly owned. When theseprovisions are not met, the patent applicationis refused or the patent is invalidated. Thereis a view that a remedy would be to transfer ashare of the right to the unnamed owner.
There are provisions stating that, when apatent right is jointly owned, the consent of
the other joint owners is not required to
exploit the invention, but the consent of theother joint owners is required to transfer ashare of the right. There are neither
provisions nor court judgments concerning
the institution of a lawsuit by a joint owner.

4

Points to be noted by Japanese
researchers
when
conducting
international joint research projects

For all countries surveyed, the major
view was not to apply foreign laws torecognition of inventors with regard to
establishment of a patent right. Recognitionof joint inventors is a matter related tovalidity or invalidity of the patent, that is, amatter related to establishment of the patentright. From this viewpoint, it can naturally
be deduced from the Paris Convention
framework, which provides for the principle
of independence of patents, that each country
is to independently regulate the contents or
extinguishment of granted patents byexpress provisions, within its own territory
and based solely on its national laws, andthat there is no room to discuss application offoreign laws in that context. Therefore,
recognition of inventors would have to be
determined in each country where the patentapplication was filed.
Accordingly, when Japanese researchers
carry out an international joint research
project and file patent applications withmultiple countries, they must file theapplications by giving sufficient consideration
to the national laws of each country.

●

III Place of Invention
The presence or absence of a system
obligating the filing of the first application in
the home country and a foreign filing license
system, as well as the outline of such systems,
are summarized below for each country.

1

Japan

There are neither provisions on an
obligation of first application nor those on aforeign filing license. Due to such a lack ofprovisions requiring recognition of the placeof invention, there are no academic theories
or court judgments concerning recognition of
the place of invention.
With regard to application of foreign laws,
the major view adopts the principle of not
applying foreign public laws.

2

United States

There is a foreign filing license system.
There are two procedures for issuing aforeign filing license. One is the procedure to
file a petition for issuance of a foreign filinglicense. An applicant may file an application
with a country other than the United States
after acquiring the foreign filing license. The
other is the procedure to file a patentapplication with the U.S. Patent andTrademark Office (USPTO). A patentapplication is deemed to be a petition for a
foreign filing license, and is deemed to be aforeign filing license after six months fromthe filing. Therefore, an applicant may file anapplication with a country other than the
United States when six months have passed
from the filing date. However, this automaticforeign filing license may be revoked by theimposition of a secrecy order. Such secrecy
order is imposed when disclosure of theinvention
involves
national
security
concerns.
When an application relating to an
invention subject to a secrecy order has been
filed with a foreign country, the patentapplication filed with the United States isdeemed to have been abandoned. Further, the47 ●IIP Bulletin 2008

person who has filed such application may be
fined not more than 10,000 dollars or
imprisoned with or without work for not morethan two years.
With regard to recognition of the place of
invention, that is, the question of whether or
not the invention was made in the UnitedStates, there is a view that the invention
needs to have been conceived or reduced topractice at that place.
As for application of foreign laws, there
is a view that U.S. laws should be observed
without giving consideration to the laws ofother countries.

3

Germany

There is no obligation of first application.
There is a system of foreign filing license only
for an invention that constitutes a statesecret. If an invention constitutes a statesecret pursuant to §93 of the Germancriminal act, the applicant must first apply
for a foreign filing license with the Ministryof Defense and obtain its written consent.
WhenfilingaEuropeanpatentapplication that may constitute a state secret,the applicant must file the application with
the German Patent and Trademark Office(GPTO) along with an annex indicating thatthe application may contain a state secret. If
there is no state secret in the invention, theapplication is forwarded to the European
Patent Office (EPO). Otherwise, theapplication stays with the GPTO and will not
be published.
As for PCT applications, for all those
filed with the GPTO serving as the receiving
office, the GPTO must examine whether or
not they contain a state secret. If a PCT
application does contain a state secret, it will
be automatically converted into a national
German patent application, which is not
published.
A state secret can relate, for instance, toweapontechnology,
cryptography,
andnuclear power plant technology.
As for penal provisions, persons
intentionally contravening the provisions
above may be punished with a monetary fine●

IIP Bulletin 2008

or imprisonment without work for not morethan five years.
There is a view that the place of
invention is irrelevant under the German
patent law system. Therefore, the survey did
not find any court judgments in which foreignlaws were applied with regard to recognitionof the place of invention.

4

United Kingdom

There is a foreign filing license system.
However, this system is applied only when an
application contains information that relates
to military technology, or publication of theinformation might be prejudicial to national
security or to the safety of the public.
When filing such application with aforeign country, an applicant must file theapplication after obtaining written authority
by the comptroller to allow the application to
be filed abroad, or file the application after
six weeks have passed from the filing with
the U.K. Intellectual Property Office(UK-IPO).
As for penal provisions, a person who
fails to comply with the provisions above
shall be imposed a fine of not more than
£1,000 or imprisonment without work for not
more than two years.
There is a view that the place of
invention is irrelevant under the U.K. patentlaw system. Therefore, the survey did not
find any court judgments in which foreignlaws were applied with regard to recognitionof the place of invention.

5

FranceThere is a system similar to the systemof obligation of first application. When theapplicant has his/her place of residence orbusiness in France, then he/she may file as afirst filing a European patent application, but
this European patent application must be
filed in France.
In addition, there are provisions statingthat the international application for theprotection of an invention filed by natural or
moral persons having their place of residence48 ●or business in France must be filed with the
National Institute of Industrial Property ofFrance (INPI) and priority must be claimed
based on an earlier application filed in
France. Therefore, the first filing may be
applied for in France via a PCT application,
but that PCT application must be filed in
France when the applicant has his/her placeof residence or business in France.
As for penal provisions, without
prejudice of the heavier penalties provided
for with regard to violation of state security,
any person who knowingly violates any of theobligations above may be liable for a fine of4500 €. Where the violation has prejudiced
national defense, the violator may besentenced
toafive-year
termof
imprisonment with work. However, thepatent is not invalidated.
There is a view that the place of
invention is irrelevant under the French
patent law system. Therefore, the survey did
not find any court judgments in which foreignlaws were applied with regard to recognitionof the place of invention.

6

China

There is a system of obligation of first
application. There are provisions stating that,when filing a foreign patent application for
an invention-creation made in China, theapplicant must first file the application with
the State Intellectual Property Office of thePeople’s Republic of China (SIPO), that is,
the patent administration department under
the
State
Council.
Whereaninvention-creation for which a patent isapplied for relates to the security or othervital interests of the State and is required to
be kept secret, the application shall betreated in accordance with the relevantprescriptions of the State.
An international patent application
under the PCT must also be filed with SIPO
serving as the receiving office, and theapplication will be processed in the samemanner after the filing.
The view on the first application system
is divided between one that deems the system●

as applicable to all persons who have theright to obtain a patent relating to an
invention-creation made in China, and onethat deems the system as not applicable
when, for instance, a Japanese company has
acquired, based on a contract, rights for an
invention-creation prior to the filing of apatent application.
As for penal provisions, there areprovisions stating that any person who has
failed to comply with the first application
obligation or has divulged a State secret shallbe subject to disciplinary sanction, and wherea crime is established, the person concerned
shall be prosecuted for his/her criminal
liability according to the law.
There is a view that foreign laws are notapplied.

7

South Korea

There are no provisions on the first
application obligation.
With regard to foreign filing license,
there are provisions stating that, if aninvention is necessary for national defense,
the government may order an inventor, etc.
not to file a patent application for theinvention in the foreign patent offices
concerned or to keep the invention
confidential, but if such persons obtain
permission from the government, they may
file an application in foreign patent offices.
Therefore, an applicant may freely fileapplications with foreign patent offices
unless such measure has been taken by thegovernment.

8

Points to be noted by Japanese
researchers conducting international
joint research projects

This section indicates the points that
researchers in Japan should take note of withregard to recognition of the place of invention,
the first application obligation and theforeign filing license, when carrying out
international joint research projects withresearchers domiciled in the countries
surveyed.
49 ●IIP Bulletin 2008

(1) Joint research project between Japanand the United States
Attention should be paid to whether or
not the invention was conceived and reduced
to practice in the United States. Consideringthat even an inventor who contributed only toa dependent claim is recognized as a joint
inventor, attention should also be paid towhether or not the invention defined in any
dependent claim was conceived and reduced
to practice in the United States.
When it is determined that the invention
has been completed in the United States, theresearchers should either file a petition forissuance of a U.S. foreign filing license andfile applications with countries other thanthe United States after the issuance of said
license, or file a patent application with the
USPTO and file applications with countries
other than the United States after six months
from such filing.
(2) Joint research project between Japan
and Germany
Attention should be paid to whether or
not the invention has the nature of a statesecret. Special attention must be paid towhether such state secret includes not only
weapon technology, but also cryptography
and nuclear power plant technology.
When the invention has the nature ofsuch a state secret, the researchers should
file applications with countries other than
Germany by any of the following methods.
- Apply for a foreign filing license with the
Ministry of Defense, and file foreign
applications after obtaining its consent inwriting.
- File a European patent application by filingthe application with the GPTO along with anannex indicating that the application may
contain a state secret.
- File an international application based on
the PCT with the GPTO serving as thereceiving office.
It should be noted that the provisions on
the foreign filing license system in Germany
are applied to cases where an invention has
the nature of a state secret, regardless ofwhether or not the invention was conceived●

IIP Bulletin 2008

or completed in Germany.
(3) Joint research project between Japanand the United Kingdom
Attention should be paid to whether or
not an application contains information that
relates to military technology or informationthat might be prejudicial to national security
or to the safety of the public.
It should be noted that, when filing anapplication containing such information witha foreign country, it is necessary to file theapplication after obtaining written authority
by the comptroller to allow the application to
be filed abroad, or file the application after
six weeks have passed from the filing with
the UK-IPO.
It should be noted that the provisions on
the foreign filing license system in the United
Kingdom are applied to cases where an
invention contains information that relates
to military technology or information thatmight be prejudicial to national security or to
the safety of the public, regardless of whether
or not the invention was conceived orcompleted in the United Kingdom.
(4) Joint research project between Japanand France
It should be noted that, when filing a
European patent application, if the applicant
has his/her place of residence or business inFrance, then he/she may file as a first filing a
European patent application but thisEuropean patent application must be filed in
France.
With regard to a PCT application, it
should be noted that, if the applicant has
his/her place of residence or business inFrance, he/she must file the PCT application
with the INPI serving as the receiving office,and priority must be claimed based on an
earlier application filed in France.
An inventor who has a Frenchnationality or who has his/her habitualresidence in France must also comply withthese matters.

50 ●(5) Joint research project between Japanand China
It should be noted that views are divided
with regard to the provisions on the first
application obligation.
Attention should be paid to the fact that,from the viewpoint that the system is notapplied when a Japanese company has
acquired rights for an invention-creation
prior to the filing of a patent application, allrights to obtain a patent relating to an
invention completed in China should betransferred to a person who does not have
Chinese nationality or to a non-Chinese
juridical person based on a researchcommission contract or a transfer contractprior to the filing of the patent application.
From the viewpoint that the provisions
on the first application obligation are applied
to all persons having the right to obtain apatent relating to an invention completed in
China, attention should be paid to whether or
not the invention was completed in China. It
should be noted that, if the invention wascompleted in China, an application should be
filed with SIPO or an international
application based on the PCT should be filedwith SIPO serving as the receiving office.
Applications should then be filed withcountries other than China, or the PCT
application should enter the national phasein countries other than China.
(6) Joint research project between Japanand South Korea
An applicant may freely file anapplication with any country, in principle. It
should be noted, however, that, only when theSouth Korean government has ordered theapplicant, etc. not to file applications relating
to an invention necessary for national
defense with foreign countries or to keep suchinvention confidential, such applicant, etc.
may file applications with countries otherthan South Korea after obtaining permission
from the government.

IV Closing Remarks
As a result of the survey, the major view●

was not to apply foreign laws to recognitionof inventors with regard to establishment of apatent right and to the obligation of first
application or foreign filing license. As foruniformity of the provisions in the countries
surveyed, there were no practical mattersthat were found to be common to all of thecountries,
exceptforbasicmatters
concerning joint inventors. In all thecountries surveyed, recognition of inventors
seems to be relevant to provisions on therequirements for the filing procedure, etc. On
the other hand, the place of invention isrelevant only in the United States and China,
and not in the other countries.
When an international joint research
project is carried out and the researchers
intend to file an application relating to an
invention made in the project, they must firstexamine the provisions of the country where
the research was conducted, and comply withthe first application obligation or otherobligations on foreign filings. Then they must
determine the joint inventors based on theprovisions of the countries with which they
intend to file applications.
Lastly, invention is a factual act.
Recognition of joint inventors and that of theplace of invention are carried out based onsuch factual act. This also applies when using
a communication means via the Internet,
when the research is conducted at places
located in multiple countries, or when
research is conducted in an airplane or on aship. Therefore, in order to recognize joint
inventors and the place of invention based on
the different provisions of different countries,
it is important to keep detailed records of the
R&D process. Depending on the combinationof the countries in which research is
conducted, there will be a risk of not being
able to file an application with any country
due to the obligation of first application orother obligations on foreign filings in thosecountries. Therefore, if possible, researchers
should sufficiently examine and carefully
select the countries in which the research is
to be conducted or the places for conducting
the research, before starting the R&D.
(Senior Researcher:Michitaka SASAKI)
51 ●IIP Bulletin 2008