Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

Intellectual Property (2nd edition)

Japan Small Flag Japan

Patents/Utility model rights/Design rights: The first owner of a right to obtain a patent is the inventor. For employee inventions, the right to obtain a patent belongs to the employer from the time of occurrence of such right by stipulating so in an agreement, employment regulation or elsewhere in advance. The same rule applies to utility model rights and design rights.

Trademark rights: The first owner of a trademark right is the applicant in whose name the trademark is registered.

Copyrights: The first owner of a copyright is the author of the work. For employee creations, the owner of the copyright is the employer, under the circumstances stipulated in §15 of the Copyright Act, unless otherwise stipulated in an agreement, employment rule or elsewhere at the time the work is created.

UAE Small Flag UAE

Generally, the creator is the first owner of each of the relevant IP rights, with copyright being a particular exception to this.

The default position is that employers and commissioners are the first owner of patents, designs and utility certificates (unless otherwise agreed). UAE law allows for additional compensation to be paid to the inventor(s)/creators(s) if the economic value of the patent/design/utility model is greater than expected.

Copyrights vests in the author of the work until, or unless, the copyright is assigned in writing. This is also the case for employee created rights, or commissioned works. Ownership of copyrights in collective works vests in the director of the creation of the work. Moral rights rest with the author of the works and cannot be assigned. It is possible for an author to agree not to exercise moral rights.

Neighbouring rights may be owned by performers in their performances, producers of sound recordings in their first recording of such sounds/performances, and broadcasting organizations in their broadcasts of programs and recordings.

The owner of a trade mark is the person who first obtains the registration of the mark in the UAE, though in certain circumstances this can be challenged through prior use or international rights.

Plant variety and plant breeder rights belong to the person who bred, discovered or developed the new plant variety.

Mexico Small Flag Mexico

Inventions

IP right

First owner?

Different for rights created in the course of employment or under a commission?

Patents

Inventor

According to article 14 of the Industrial Property Law, the provisions of the Mexican Labour Law (mainly: article 163), shall be applied when it comes to inventions made by a person subject to an employment relationship.

 

Therefore, under the scope of article 163 of the Mexican Labour Law, the ownership of a given invention is subject to the following rules: (i) in any case, the inventor shall be identified as the author of the relevant invention; (ii) if the services provided by the employee are related to research activities, the invention’s ownership as well as the exploitation right shall be held by the employer; and (iii) if nothing is agreed between the parties, the ownership of the invention will be held by the inventor, but the employer shall have a preferential right –in equal circumstances- to obtain the ownership as well as the exclusive right to use the relevant invention.

Utility models

Inventor

Industrial designs

Inventor

Integrated circuits

Inventor

Brands

IP right

First owner?

Different for rights created in the course of employment or under a commission?

Trademarks

Applicant

If the trademark / trade name / slogan was created during the course of employment of under commission then the owner will be the employer.

Trade names

Applicant

Slogans

Applicant

Appellations of Origin

The Mexican Government

N/A

Geographical Indications

The Mexican Government

N/A

Copyright and other rights

IP right

First owner?

Different for rights created in the course of employment or under a commission?

Copyright

Author

Article 84 of the Federal Law on Copyright (FLC) provides that in case of a work made in the course of an employment relationship (under a written individual employment contract), the rules that should be applied concerning the ownership of rights are the following:

 

a)  If there is an intellectual property clause, the same should be complied.

 

Some individual employment contracts include an intellectual property clause, in which the employer states that the copyright of works created by employees will completely belong to the employer.

 

b)  If there is no clause or agreement about the ownership of a copyright, the FLC provides that the rights will be owned by both the employer and the employee (50% each).

 

Furthermore, only the employer is entitled to disclose the work without the employee´s authorization.

 

c)  If there is not a written contract, the ownership of rights will belong to the employee.

On the other hand, when it comes to Commissions, unless agreed otherwise, the natural person or legal entity, which commissions a party to create a given work, shall have the ownership of the exploitation rights.

If there is not a written contract, the ownership of rights will belong to the employee.

Related rights: artist, performers and executors

Artist, performers and executors

No, they are not different.

Related rights: book publishers

Book publishers

No, they are not different.

Related rights: phonogram producers

Phonogram producers

No, they are not different.

Related rights: video producers

Video producers

No, they are not different.

Related rights: broadcasting organizations

Broadcasting organizations

No, they are not different.

Reservation of rights

Applicant

If the reservation of rights was created during the course of employment of under commission then the owner will be the employer.

Plant varieties

Applicant

If the reservation of rights was created during the course of employment of under commission then the owner will be the employer.

India Small Flag India

Patents:
The inventor or its assignee are the first owner(s) of the patent rights.

Unless, there is a formal employment agreement to this effect, all rights arising out of an invention vests with the employee inventor and an employer has to execute an assignment with the employee to acquire rights to an invention.

Trade marks; Collective Marks and Certification Marks:
Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. As per the Trade Marks law, the Applicant/registered proprietor of a Trade mark; Collective Mark or Certification Mark shall be considered the owner of the Trade mark; Collective Mark or Certification Mark.

Domain name:
The legal owner of a domain name is the person and/or organization listed as the domain’s registrant or owner contact.

Copyright:
The author of a work is the owner of copyright therein.

In case the author is employed by newspaper, magazine etc. under a contract of service, the proprietor will be the first owner in the absence of an agreement to the contrary in the case of a literary, dramatic or artistic work.

Where a photograph is taken, or a painting or portrait drawn for a valuable consideration at the instance of person, such person is the first owner.

Where any address or speech is delivered in public, the person delivering is the first owner and where it is delivered on behalf of another person such other person is the first owner.

In case of Government work, Government shall be the first owner and in case of work made or published by or under any public undertaking, it shall be the first owner.

Designs:
The Applicant/registered proprietor of a Design shall be considered the owner of the Design.

Updated: June 15, 2018