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Author
Olga Dolgikh

Head of Department / Patent Attorney/ Mechanics Engineer

11 March 2021

Ownership vs. Authorship in Patent Law

People commonly confuse patent inventorship with ownership — or assume that they are the same thing. But they are distinct concepts: The owner of a patent enjoys all of the rights and benefits granted by the patent. The inventor is not always the owner of the patent, and so doesn’t always enjoy those rights.

Let’s break this down in detail. Authorship and ownership of inventions are key legal principles in patent law and practice, but are still misunderstood by many, leading to friction between different parties, including colleagues who work for the same company, and sometimes to litigation. In this paper, we will look at some basic but important issues about authorship and ownership to help inventors and patentees better understand the importance of forward planning with respect to their rights and responsibilities.

It should be noted at the outset that authorship and patent ownership, i.e., patent ownership or title, are not the same thing. Authorship and ownership refer to different legal concepts and should not be confused. In general, authorship generally refers to the individuals who contributed to the creation of the invention, whereas ownership is related to the parties, i.e., individuals or legal entities, who own the ownership rights to the invention.

According to Article 1347 of the Civil Code of the Russian Federation (hereinafter the Civil Code), the author of an invention, utility model or industrial design is the citizen by who’s creative labour the relevant result of intellectual activity has been created. Unless otherwise proven, the person mentioned as the author in a patent application filed for an invention, utility model or industrial design shall be deemed the author of the invention, utility model or industrial design.[1] Thus, it follows from this definition that only a natural person may be an author.

Hereby, it is natural to ask if there can be several authors. We can find the answer in the Civil Code: citizens who have created an invention, utility model or industrial design by joint creative work are recognized as co-authors. It follows by definition that there may be several authors.

It should be noted that according to Article 1228 of the Civil Code, citizens who did not personally contributed to the creation of such result, including those who provided only technical, consulting, organizational or material assistance or help to the author or only facilitated the registration of rights for such result or its use, as well as citizens who supervised the implementation of the relevant works are not recognized as authors of the result of intellectual activity.[2]

The author of the result of intellectual activity has the right of authorship, the right to name and other personal non-property rights. Consequently, the author must be indicated as such in the application for an invention, utility model or industrial design. But what happens if the author is not indicated when submitting the application or the author is indicated who is not a real author? If such an error occurred by accident, it is necessary to take all necessary actions and include the valid author in the application or exclude the one who is not the real author. Patent law allows this to be done by submitting certain documents to the patent office.

But what are the consequences if the application intentionally lists an author who is not or does not include an author who’s really the author? Intentional submitting of incorrect author information to the patent office can have serious legal consequences. In general, such an act can be considered fraudulent, make the patent vulnerable, and lead to its revocation or invalidation.

The right of authorship, the right to the name and other personal non-property rights of the author are inalienable and non-transferable. 

Authorship and the name of the author are protected without limitation in time.

The exclusive right to the result of intellectual activity, generated by creative work, initially arises with its author. This right may be transferred by the author to another person under the contract, and may also pass to other persons on other grounds established by law.

The rights to the result of intellectual activity, created by joint creative work of two or more citizens, i.e., co-authorship, belong to co-authors jointly.

Thus, the exclusive right arises initially with the author, but can be transferred to another person.

A citizen, i.e., individual or a legal entity possessing an exclusive right to a result of intellectual activity or to a visual identity is called a right holder and has the right to use such result or such identity at its own discretion in any way not contradicting the law. The right holder may exercise of the exclusive right to the result of intellectual activity, unless otherwise is stipulated by a rule of law.

The right holder may at its own discretion allow or prohibit others to use the result of intellectual activity or visual identity. Absence of the prohibition is not considered as consent (permission).

Other persons may not use the relevant intellectual activity result or identity without the consent of the right holder, except for the cases stipulated by the legislation. The use of the result of intellectual activity or identity, if such use is carried out without the consent of the right holder, is illegal and entails liability established by the patent legislation, other laws, except for cases where the use of the result of intellectual activity or identity by persons other than the right holder without its consent is allowed by the Civil Code.[3]

The exclusive right on the result of intellectual activity or on the means of individualization can belong to one person or several persons together.

The right holder may be not only a natural person or a legal entity but also a group of individuals, a group of legal entities, and an individual and a legal entity together.

In case the exclusive right to the result of intellectual activity or identity belongs to several persons jointly, each of the right holders may use such result or such identity at their own discretion, if the Civil Code or the agreement between the right holders does not provide otherwise. Relations between the persons to whom the exclusive right belongs jointly shall be determined by the agreement between them.

Exercising of the exclusive right to the result of intellectual activity or to identity shall be carried out jointly by the right holders, unless the Civil Code or the agreement between the right holders provides otherwise.

The income from joint use of the result of intellectual activity or identity or from joint exercise of the exclusive right for such result or for such identity shall be distributed between all the right holders in equal shares unless the agreement between them stipulates otherwise.

In conclusion, we note that the right holder can exercise his exclusive rights at its own discretion, in particular, to change the name of the right holder, address, alienate, donate or sell its patent to any interested person, grant the right to use it for a certain period, and in case of violation of rights to file a lawsuit and demand compensation.


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