Managing the Legal Nexus Between Intellectual Property and Employees
Show Less

Managing the Legal Nexus Between Intellectual Property and Employees

Domestic and Global Contexts

Edited by Lynda J. Oswald and Marisa Anne Pagnattaro

The explosion in intellectual capital coincides with a growing understanding of the importance of human capital to the firm. This book examines the pressing legal issues that arise at the intersections of intellectual property law, employment law, and global trade, such as the use of employment contracts to protect intellectual property, ownership of intellectual property created by the employee, officer liability issues relating to infringement, post-employment confidentiality and non-compete agreements, and inadvertent or deliberate misappropriation or theft of trade secrets.
Buy Book in Print
Show Summary Details
You do not have access to this content

Chapter 9: Patent grant-back clauses in international license agreements: a survey and ethical analysis

David Orozco


This chapter will examine the topic of patent grant-back clauses in international patent license agreements. These clauses, which have greatest applicability to independent contractor agency relationships, have the potential to restrict innovation and violate international legal and ethical norms. Several international treatments of this issue will be examined to find a compromise that tempers the negative impacts of overly broad and restrictive grant-back clauses. A sample clause will then be offered as a compromise that represents an ethical solution that takes international norms and cultural differences into account. A patent is a set of exclusive rights granted to applicants for inventions that meet standards of novelty, non-obviousness, utility and full disclosure. A patent grant-back is a contract term in a patent licensing contract that legally obligates the party licensing the technology (licensee) to transfer ownership of any improvements that the licensee makes with respect to the licensed technology back to the patent owner (licensor). This practice raises several interesting issues related to business strategy, international trade law and ethics. Each of these issues will be examined in this chapter. In its broadest form, a patent grant-back extends to any improvement that relates in any way to the licensed and patented technology. An improvement patent builds from a prior patented technology and a license is required by the licensor to practice the improvement.

You are not authenticated to view the full text of this chapter or article.

Elgaronline requires a subscription or purchase to access the full text of books or journals. Please login through your library system or with your personal username and password on the homepage.

Non-subscribers can freely search the site, view abstracts/ extracts and download selected front matter and introductory chapters for personal use.

Your library may not have purchased all subject areas. If you are authenticated and think you should have access to this title, please contact your librarian.

Further information

or login to access all content.