YEARBOOK 2009 / I - AIPPI

contractual provisions to the contrary”. Concerning the exercise of the co-ownership, the
following paragraphs of the referred article provide that: (a) if more than one employee is
involved, employees share shall be equally divided among them; (b) the employer shall be
entitled to an exclusive license right for the exploitation and the employees shall receive a fair
remuneration; (c) the employer shall start the exploitation within one year from the granting
of the patent, otherwise the title to the patent shall be transferred to the employee(s), except if
the lack of exploitation resulted from justifiable reasons. A final provision reflects the general
Civil Code understanding concerning co-ownership granting to any of the co-owners, under
the same conditions, a preferred right in the event of an assignment.
Finally, as already mentioned in the previous report concerning co-ownership of IP Rights
in Brazil, besides the common basis established by the BCC, there are specific regulations
concerning the different IP Rights. Trademarks should be object of some careful consideration
due to the peculiar understanding of the Brazilian Trademark Office as stressed in the previous
report. Moreover, some additional regulation is art. 15 of Law nb 9,610/98 (Brazilian
Copyright Law, hereinafter “BCL”), art. 5 of Law nb. 9,456/97 (Plant Variety Protection Law)
and articles 27 and 28 of Law nb. 11,484/07 (concerning the Protection of Topographies of
Integrated Circuits).
2) A large debate, during the Singapore ExCo, took place with regard to the notion of the
exploitation of an IP right.
More specifically, the groups were highly divided on the issue of outsourcing or subcontracting
the exploitation of an IP right.
This question, particularly important in case of patents, relates particularly to the problem
of subcontracting when a co-owner of the patent who, in principle, and at least according
to the position expressed by AIPPI in its 2007 Singapore Resolution, has the personal right
to exploit his own part of the patent, specifically by manufacturing and selling the goods or
processes covered by the patent, needs to subcontract partially or totally the manufacturing
of the product covered by the patent.
No common position could be achieved by the Singapore ExCo in 2007 on the question
if the right to exploit the patent should also cover the right to subcontract, specifically the
manufacturing of all or part of the invention being the subject matter of the patent.
Therefore, the groups are invited to present the solutions of their national laws on this specific
point.
There is no clear solution based on the Brazilian experience. The Brazilian group is concerned
and aware of the different problems that may arise if one of the co-owners subcontracts a
third company.
Under Brazilian Law, a co-owner of an IP Right is able to outsource or license his own part
of the patent. However, it is important to note that the exploitation made by one co-owner
(direct or outsourced) turns this co-owner accountable for the gains perceived, which must be
distributed among all the other co-owners, in the proportion of each respective shares (BCC,
articles 1319 and 1326). Therefore, any use of the co-ownership should, in theory, bring a
neutral or positive result to all co-owners. Nevertheless, in a controversial decision, the Court
of Justice of Rio de Janeiro (Panther et al vs. Crysfred et al, Ap. Cível No. 2007.00134403)
ruled that a co-owner of a patent may directly or indirectly exploit the patent rights.
As mentioned, a different situation may be faced when an action of a co-owner (either
directly or by means of an outsourcing) inflicts an undue burden upon any co-owner. The
solution would imply in the usual compensation of damages.
As it is agreed that the outsourcing or licensing could bring some difficulties related to the
exploitation of an IP Right, a possible legislative solution to prevent such impasse could
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