Question Q194 National Group: United Kingdom Title: The ... - AIPPI

Question Q194
National Group:
Title:
Contributors:
United Kingdom
The Impact of Co-Ownership of Intellectual Property Rights
on their Exploitation
in the name of the United Kingdom Group by
Michael Edenborough, Lucy Harrold, Paul Harris, Tom
Faulnker, Nicholas MacFarlane, Catriona Smith, James
Tumbridge
Date: March 2, 2009
I) Analysis of the current substantive law
1) The regulation of co-ownership may depend on the origin of co-ownership.
It may be considered that, in case the object of an intellectual right (esthetical,
technical or commercial) is jointly created by two or more persons, the rules
applicable to such a situation may be different from those applicable in the
situation when the co-ownership results from the division of the same right
among different persons as the consequence, for example, of heritage or a
division of a company.
Also, there may be the situations where the co-ownership is imposed in fact by
one party on the other in case of some technical creation (for example in case
of the improvement or modification of the previous creations which not always
may result in the independent right).
Therefore, the groups are invited to indicate if, in their national laws, the rules
related to the co-ownership of IP Rights make any distinction in the applicable
rules to the co-ownership of an IP Right in case the origin of the co-ownership
rights is not voluntary but results from other situations, including the division
of a right in case of a heritage.
In this context the Groups may also indicate if there are any legal definitions of
co-ownership of the IP Rights adopted in their countries and what these
definitions are.
The laws of the United Kingdom do not give rise to different types of co-ownership of
IP Rights based on the origins of the co-ownership.
Co-ownership might arise in a number of different ways. For example, the work in
question might be generated in a manner whereby two or more people are
considered to be co-authors (for copyright) or co-devisors (patents). Not all the IPRs
regimes make express provision governing who is to be considered co-creators of
the particular right in question. Further, regardless of who might be considered cocreators,
commonly there are statutory provisions that determine who are the first
owners of the right in question. This might result (for example in the case of
copyright) in two co-authors who are both employed by the same employer in the
ownership being solely in the hands of the employer.

The law does distinguish between all forms of co-ownership as being either
ownership as a ‘tenant in common’ or as a ‘joint tenant.’ The principal difference
between these two forms concerns the rules relating to survivorship. Under joint
tenancy, if one co-owner were to die, then his share automatically would be
distributed amongst the remainder co-owners; while in contrast under tenancy in
common, if one co-owner dies, then his share devolves in accordance with his
testimonial wishes, or if there is no will, then in accordance with the rules of intestacy.
Typically, IPRs jointly owned in a commercial context would be held as a tenancy in
common, but occasionally this might not occur, e.g. husband and wife scenarios, and
maybe for certain types of confidential information (e.g. personal as opposed to
technical).
The UK law also permits for the legal and equitable titles to a right to be owned by
different people. For example, if there is a binding agreement to assign a right, but
that agreement has not yet been executed, or the execution was flawed so that there
was a failure to transfer the right in question, this could lead to co-ownership of the
legal and equitable rights being held by different persons until the title is untied back
in one person.
We do not propose to take consideration of the position of partnerships that own an
IPR as a partnership asset. Such assets being subject to rules of partnership deeds
and the rules in the Partnership Act 1890; in particular, the operation of section 5,
whereby permission granted by one partner binds his fellow partners.
There is no strict legal definition of co-ownership governing IPR. The concepts
applicable arise from UK property law generally. Under UK law, all intellectual
property rights (IPRs) have their own framework either under statute or common law.
The principal IPRs available in the UK are:
Registered Rights:
Patents (UK and EP designating the UK)
Registered Designs (UK and Community)
Registered Trade Marks (UK and Community)
Equitable right – unregistered:
Confidential Information (excluding official secrets, which are governed by the Official
Secrets Act 1989)
Unregistered Rights:
Unregistered Designs (UK and Community)
Passing Off
Copyright
Co-owners may regulate their ownership by contract. As a general rule, contract
overrides the statutory provisions, save for the obvious exceptions like illegality. For
an overview of these IPRs and the rights and definitions of co-owners we would refer
the reader to the answer provided by the UK to question 194 at the Singapore ExCo
2007.
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.
We would refer the reader to the answer provided by the UK to question 194 at the
Singapore ExCo 2007 for the position in the UK on the rights of co-owners to exploit,
and the ability to licence their rights. Under the UK law outsourcing or
subcontracting would be done by operation of a licence.
As this question raises specific concern as to patents we respond in detail on the
position regarding patents in the UK:
Patents are governed by the Patents Act 1977. Other than by agreement to the
contrary, those who are jointly granted a patent, are each entitled to an equal
undivided share in the patent (section 36(1)) and to work the invention for their own
benefit without accounting to the others (section 36(2)). Therefore co-owners are free
to agree amongst themselves how to work their patent, and only fall back on the
Patents Act when there is no agreement.
Pursuant to section 36(2)(a) & (b) of Patents Act 1977; where two or more persons
are proprietors of a patent, then, subject to the Act and any agreement to the
contrary each of them shall be entitled, by himself or his agents, to do in respect of
the invention concerned, for his own benefit and without the consent of or the need
to account to the other or others, any act which would apart from this subsection …,
amount to an infringement of the patent concerned.
At common law one co-owner cannot prevent any other co-owner from working the
invention, see Steers v Rogers [1893] AC 232. However, at common law, one coowner
acting alone could not give a licence binding the other co-owner(s), although
there appears to be no authority directly on the point.
A co-owner of a patent may not grant a licence under the patent without the consent
of the other owners (section 36(3)) Henry Bros (Magherafelt) Ltd. v. Ministry of
Defence [1997] RPC 693. Another person may supply a co-owner of a patent with an
essential element for the working of the invention, and such supply will not amount to
an infringement of the patent (section 36(4)). If a co-owner disposes of a patented
product to any person, then that person (and any other person claiming through him)
is entitled to deal with the product in the same way as if it had been disposed of by a
sole registered proprietor (section 36(5)). The UK group also wished to draw
attention to the fact that our law differs from the USA in these matters.
Therefore a sub-contractor, when acting as agent to a co-owner of a patent
exploiting their IPR is acceptable, save where a licence is necessary for the use of
said sub-contractor. Likewise in out-sourcing, if no licence is required it is
acceptable in principle, but the UK believes such arrangements will typically require
a licence. Should a licence be required, and it be refused by one co-owner as
against another which frustrates the ability to work the invention, then an application
to the Comptroller of Patents can be made to resolve the dispute between the co-

owners; the Comptroller having the power to make orders as between co-owners
(section 37). There have been cases where the Comptroller of Patents has given a
co-owner the power to grant licences without referring to the other co-owners. See
for example, McGriskin's Patent (BL 0/36/99 and 0/135/00) where it was ordered that
a newly determined co-owner (under Patent Act s.37 proceedings) should be
permitted to grant licences without agreement or interference from the other coowner,
overriding section 36. See also Andrew's Application (BL 0/21/98). Further,
the Court of Appeal in Hughes v Paxman [2006] EWCA Civ 818, confirmed that
under the Patent Act 1977 section 37, the Comptroller does have jurisdiction to grant
licences to a party approved of by only one co-owner. However, the broad discretion
exercised by the Comptroller of Patents is not available in all IPRs.
Note that the situation for other IPRs is often fundamentally different. Therefore, for
example, for copyright, one co-owner has no right to exercise the rights alone, not
even if he accounts to his co-owners for an appropriate share of the profits
(Cescinsky v George Routlege & Sons Ltd [1916] 2 KB 325).
3) The working guidelines established for the Singapore EXCO contained also
the question related to the possibility of the co-owner of an IP right to licence
this right to third parties.
No distinction was, however, made in this context between a non-exclusive
and an exclusive licence.
No differentiation was also made on the number of licences which could be
given by one co-owner in case the non-exclusive licence would be permitted
by the national law.
And if the AIPPI adopted a resolution on the conditions of granting the licence,
it also appeared during the discussion at the EXCO that some different or more
precise solutions could have been obtained if the Working Committee had
made a distinction between the nature of the licence.
Therefore, in order to improve the work of the EXCO, the groups are invited to
specify how the differences in the nature of licenses (non-exclusive or
exclusive) influence the solution of their national laws in respect of the right to
grant the licence by a co-owner of an IP Right.
The law of the UK in general draws no distinction between exclusive and nonexclusive
licences, in regard to the question posed. If a licence is permitted it may be
either exclusive or non-exclusive. We would refer the reader to the answer provided
by the UK to question 194 at the Singapore ExCo 2007 for the position in the UK as
to the right of co-owners to grant licences.
Some of the UK’s legislation draws specific attention to the ability to have both
exclusive and non-exclusive licences, for example the Trade Mark Act 1994 in
sections 28 – 31, which recognises a difference between exclusive and nonexclusive
licences; in that, subject to the licence terms, the exclusive licence provides
the same rights to the licensee as if the trade mark had been assigned. Further, the
UK’s copyright legislation in the Copyright Designs and Patents Act 1998 makes
certain infringements actionable by a non-exclusive licensee, and like the trade mark
legislation recognises that exclusive licensees may bring actions for infringement
without the owner.

4) One of the most difficult questions which appeared during the discussion at
the Singapore EXCO was the possibility to transfer or assign a co-owned share
of an IP right.
And the problem seemed so complicated that finally the Working Committee
decided to withdraw its proposal for a resolution on this point.
In fact, the discussion showed that the solutions concerning the right to
transfer or assign may vary since there is a huge variety of situations related to
the transfers of the co-owned share.
Notably, one could imagine that the transfer is operated on the whole share of
the co-owned IP right, but it also could be simply an assignment of a part of
the co-owned share, creating therefore an additional co-owner of an IP right.
And such transfer of a part of a share of an IP Right could be used to overcome
the limitation which could exist on the granting of licences by the co-owners.
The Groups are therefore invited to precise their position on the question of
the transfer or assignment of a share of the co-owned IP Right, taking into the
consideration the different situations which may occur ( the transfer of the
whole share of a co-owned IP Right or the transfer only of the part of the share
of the co-owned IP Right).
In the UK any assignment as described in the foregoing question is permissible by
contract. The English law permits parties to contract for anything that is not
prohibited by statute, commonly known as freedom of contract. If there were a
dispute between owners as to the ability to assign only a sub-share of the share
presently owned by the co-owner, this could be referred to the Court or in the case of
patents the Comptroller for a determination under their power set down in section 37
of the Patents Act referred to above in sub-question 2.
5) The exercise of an IP right co-owned by two or more co-owners each of
whom has in principle the right to exploit the co-owned right, may also raise
difficulties from the point of view of competition rules.
The co-owned IP Rights may give the co-owners the dominant position on the
market and their agreement on the co-owned IP Rights (when for example it
prohibits the licensing) may also be seen as eliminating the competitors from
the market.
The groups are therefore invited to explain if their national laws had to treat
such situations and what were the solutions adopted in those cases.
The UK like elsewhere seeks to achieve a balance between the public interest in the
limited monopolies of IPRs, and the public interest in competition. The response to
this sub-question considers three areas of law; (1) European Union law on
Competition, (2) UK law on Competition, and (3) Compulsory licences in patents.
(1) European Union Law
IPRs are monopolies and restrict competition; as a result agreements which affect
the ownership and control of IPRs and the manner of their exploitation can breach
competition law in certain circumstances. In relation to European Union law the
affect upon competition by IPRs between member states is the paramount concern.

Article 81(1) of the EC Treaty prohibits, ‘as incompatible with the common market,’
agreements ‘that may affect trade between member states and have the object or
effect of preventing, restricting or distorting competition within the common market.’
However, agreements falling within Article 81(1) may be exempted under Article
81(3) or, if they fall within the defined parameters of a block exemption for the
particular type of agreement, they may be automatically exempted. There are block
exemptions for licences of patents and/or know-how (the Technology Transfer block
exemption (Commission Regulation (EC) No 772/2004 (OJ 2004 L123/11) which
replaced Commission Regulation (EC) No 240/96 as of 1 May 2004), for agreements
concerning research and development or specialisation and for vertical agreements).
Joint ventures that are ‘concentrative’ will in general avoid sanction (Commission
control) unless they are large enough to fall within the scope of Council Regulation
(EC) No 139/2004 on the control of concentrations between undertakings (ECMR),
which provides a largely self contained mechanism of control. Other joint ventures,
termed ‘co-operative’ fall to be considered under Article 81 and any applicable block
exemptions. The Commission has issued a Notice concerning the assessment of
horizontal co-operation agreements under Article 81 (the Guidelines) (OJ 2001
C3/02).
Competition issues can arise in collaborative R&D agreements which result in IPRs
being co-owned. The Commission's being concerned that collaborators (whether
they are actual or potential competitors) reduce competition. Such agreements, if
between large enough companies who are potential competitors, will in practice
almost inevitably contain restrictions which might on their face breach Article 81,
irrespective of whether or not the collaboration is undertaken by means of a separate
joint venture vehicle.
The Commission accepts it is in the public interest to encourage co-operation in R&D
and in the exploitation of the results thereby generated, which requires a balanced
approach to the restrictions of Article 81. The Research and Development Block
Exemption (the R&DE) (Commission Regulation (EC) No 2659/2000 on the
application of Article 81(3) of the EC Treaty to categories of research and
development (OJ 2000 L304/7)), reflects this approach. The R&DE exempting from
Article 81 certain agreements for joint R&D and joint exploitation (including
assignments or licensing of intellectual property rights or the communication of knowhow
to third parties) of the results of that R&D. However, the R&DE applies only
where the agreement meets certain criteria such as:
• All parties have access to the results of the joint R&D for the purposes of
further research or exploitation (Article 3(2), R&DE).
• Where the parties are not competing undertakings at the time the agreement
is entered into, the right to exploit the results may be limited to one or more
technical fields of application (Article 3(3)).
• The joint exploitation relates to results which are protected by intellectual
property rights, or constitute know-how, which substantially contribute to
technical or economic progress, and the results are decisive for (that is,
central to) the manufacture of the contract products or the application of the
contract processes (Article 3(4)).

• Undertakings charged with manufacture by way of specialisation in production
must fulfil orders for supplies from all the parties, except where the R&D
agreement also provides for joint distribution (Article 3(5)).
• Where the parties are not competing undertakings, the R&DE will apply for
the duration of the R&D programme and for seven years afterwards if the
results are to be jointly exploited. If the parties are competing undertakings,
that same period will apply only if the parties' combined market share does
not exceed 25% of the market for products capable of being improved or
replaced by the contract products. In either case, after the seven-year
exploitation period, the exemption may continue to apply indefinitely provided
the parties' continued production of the contract products and other
substitutable products does not exceed 25% of the total market for such
products.
All conditions under which undertakings pursue R&D are permitted, subject to certain
conditions and to the exclusion of certain hardcore restrictions, such as:
• A prohibition on challenges to the validity of intellectual property rights which
the parties hold in the EU and which are relevant to or protect the results of
the R&D (but provisions which allow a party to terminate the R&D agreement
if its intellectual property rights are challenged by the other are allowed).
• A prohibition on the putting of the contract products on the market, or the
pursuit of an active sales policy for them, in territories within the EU that are
reserved for other parties after the end of seven years from the time the
contract products are first put on the market in the EU.
• A requirement to refuse to meet demand from users or resellers in their
respective territories who would market the contract products in other
territories within the EU.
Certain restrictions are specifically permitted:
• Setting production targets where the exploitation of the results includes the
joint production of the contract product.
• Setting sales targets and fixing prices to be charged to immediate customers
where the exploitation of the results includes the joint distribution of the
contract products. (Article 5(2), R&DE.)
(2) UK Law
UK competition law mirrors EU law to a great extent, the Chapter I prohibition under
the Competition Act 1998 which mirrors Article 81 is similarly subject to various
exemptions. Although the substantive legal principles relevant to the application of
the Chapter I Competition Act prohibition to agreements and the Chapter II
Competition Act prohibition to conduct are similar or identical to those under Articles
81 and 82 of the EC Treaty respectively, the licensing of IP rights may be different in
some respects.
(3) Compulsory licences in patents
One method by which the UK deals with anti-competitive practices is that of
compulsory licences, per s.48 Patents Act 1977. Therefore in the scenario that

patent holders choose not to work an invention to suppress its use, or are failing to
meet market demand third parties can apply for compulsory licences to work the
invention. Such applications may also be applied for where one co-owner is
preventing the other from working the invention due to their need to licence a third
party, in accordance with the case of Hughes v Paxman [2006] EWCA Civ 818.
Compulsory licences cannot be granted until after three years from grant of the
patent
6) The groups are invited to investigate once more the question of the
applicable law that could be used to govern the co-ownership of various rights
coexisting in different countries.
This point was left for further study by the paragraph 9 of the resolution
adopted in Singapore.
And more specifically the Groups are requested to indicate if their national
laws accept that the co-ownership of an IP Right, even if there is no contractual
agreement between the co-owners, may be ruled by the national law of the
country which presents the closest connections with the IP Right.
If this is the case, what in the opinion of the Groups would then be the
elements to take into the consideration to assess this connection?
The Groups of the EU Countries are in this context asked to indicate if they
consider that Council Regulation of June 17, 2008 (No 593/2008), so called
“Rome I” may be applicable to the Co-Ownership agreements.
The established UK law on determining jurisdiction generally applies to disputes
regarding the ownership of IPRs. Where such rights are not settled contractually
between the parties, jurisdiction will be decided upon established principles which the
UK group feels are beyond the scope of this paper. If the UK Courts decide to
exercise jurisdiction then it would determine the issue of ownership by reference to
the relevant foreign law or laws based on the location of creation.
With regard to the Rome Convention on the Law Applicable to Contractual
Obligations 1980 (Rome Convention) the UK group consider that it is not applicable
in all scenarios but can be informative, and is part of UK domestic law by virtue of the
Contracts (Applicable Law) Act 1990. The Rome Convention sets out the rules for
determining what substantive law should be applied by courts when resolving
contractual disputes, but does not extend to non-contractual (such as tortious
actions) obligations. Consequently, it would not assist in matters such as passing off
in the absence of a contractual relationship between the parties. In the absence of
an express choice of governing law, a court with jurisdiction will have to decide which
law to apply to the contract according to the conflict of law principles that apply in that
court's jurisdiction. The Rome Convention harmonised the rules for establishing the
law applicable to contracts in the EU. Under the Rome Convention, parties are free
to choose the law to govern their contract. The governing law clause applies to a
wide range of contractual issues. It governs not only interpretation and performance,
but also the consequences of breach, including the assessment of damages and
limitation (article 10).
In the absence of party choice, Article 4 of the Rome Convention provides that a
contract will be governed by the law of the country with which it is most closely
connected. It will be assumed that this will be the country where the party who is to

effect the performance which is characteristic of the contract has his habitual
residence or, in the case of a corporate entity, the country where is has its central
administration.
It should be noted that, while an express choice of law cannot be overturned,
challenges can be made to it under the Rome Convention, which can have the effect
of modifying the applicable law, inter alia on the following bases:
• Where all the relevant elements are connected with another country other
than the applicable law.
• Where the choice of forum is different from the applicable law.
• Where the public policy of the forum is manifestly incompatible with the
application of the applicable law.
• Fraud, mistake, non-incorporation or other such grounds under general
principles of contract law.
The UK therefore uses established principles to determine applicable law and does
not treat IP differently from other matters when determining applicable law. It
considers the same principles should apply to Rome I (which does not at present
apply to the UK).
7) Finally, the groups are also invited to present all other issues which appear
to be relevant to the question and which were not discussed neither in these
working guidelines, nor in the previous ones for the 2007 EXCO in Singapore.
The UK group consider the following issues have not been discussed – Renewals;
Surrender; Pre & Post Grant Amendment and Litigation.
II) Proposal for the future harmonisation
The groups are invited to present any recommendation that can be followed in
the view of the further harmonisation of national laws in the context of coownership,
specifically on the points raised by the working guidelines above in
relation to the current state of their national laws.
The UK Group would suggest that the removal of the right to co-own an IPR might
raise interesting discussion and present unique opportunities.
In general, the UK group believes that a co-owner should be subject to restrictions on
his freedom to deal with or to exploit a co-owned intellectual property right; otherwise
he has the power to destroy the value of that right. When no agreement can be
reached between co-owners, then jurisdiction to resolve such a stalemate should be
conferred on, for example, the Intellectual Property Office. The UK group also
supports moves towards harmonising these issues on an international basis,
because differences in national laws can defeat the expectations of rights owners
who structure their relationship with co-owners based on their own national law and
the false assumption that the same applies elsewhere. It is the opinion of the UK
group that consideration of how to harmonise each IPR should be considered in turn
rather than as a whole, and we would recommend that process be commenced with
patents. However, the UK group considers harmonisation between Common and
Civil law jurisdictions presents problems as they do not all recognise the same rights,
and there are even differences as between common law jurisdictions, and

jurisdictions that utilise a hybrid system which mixes roman, civil and common law
principles.
SUMMARY
The laws of the United Kingdom do not give rise to different types of co-ownership of
IPRs dependant upon the origin of the co-ownership. Regardless of the genesis of
the work that is co-owned, there are two different types of co-ownership, namely
either as ‘tenants in common’ or as a ‘joint tenants,’ which affects the nature of
survivorship rights. The UK also permits ownership of equitable and legal titles, held
by different persons.
Co-ownership is commonly regulated by contract, and freedom of contract makes
almost any arrangement permissible. The rights of co-owners to work inventions and
licence rights do vary based upon the IPR in question and the relevant governing
statutory regime. In general co-owners must agree to licence and sub-contract the
IPR and may not act unilaterally, although they may seek a decision of the Court to
determine a dispute between themselves.
The interface between competition and IPRs is complex, and the law is greatly
influenced by EU law. The UK seeks to balance the public policy between the
individual right and the public interest, e.g. it is possible to request a compulsory
licence to ensure patents are worked.
In general, the UK group believes that a co-owner should be subject to restrictions on
freedom to deal with a co-owned IPR; otherwise the value of that right may diminish.
Where co-owners are in different jurisdictions and disputes arise, the UK Courts
determine ownership by reference to the relevant foreign law or laws based on the
location of creation.
The group supports moves towards harmonising these issues, because differences
in national laws can defeat the expectations of owners who structure their
relationship with co-owners based on their own national law. The harmonization of
each IPR should be considered in turn, and we would recommend that process be
commenced with patents.
RESUME
Les lois du Royaume-Uni ne permettent pas différents types de copropriété des
droits de propriété intellectuelle selon l'origine de la copropriété. Quelque soit la
genèse du travail qui est en copropriété, il y a deux différents types de copropriété,
soit "conjointe", soit "solidaire",’ ce qui affecte la nature des droits du survivant. Le
Royaume-Uni permet aussi que la propriété sur la valeur et les titres de propriété soit
détenue par différentes personnes.
La copropriété est habituellement gouvernée par les contrats, et la liberté
contractuelle rend presque tout arrangement possible. Les droits des copropriétaires
d'exploiter et de concéder les droits varient selon le droit de propriété intellectuelle en
question et le régime légal applicable. En général les copropriétaires s'accordent
pour concéder et sous-contracter les droits de propriété intellectuelle et ne peuvent
agir de manière unilatérale, bien qu'ils puissent requérir une décision du tribunal pour
régler un conflit entre eux.

L'interface entre la concurrence et les droits de propriété intellectuelle est complexe,
et le droit est grandement influencé par le droit communautaire. Le Royaume-Uni
cherche à équilibrer la politique publique entre le droit individuel et l'intérêt du public,
par exemple il est possible de requérir une licence obligatoire pour s'assurer que les
brevets sont exploités.
En général, le groupe du Royaume-Uni considère qu'un copropriétaire devrait être
sujet à des restrictions sur la liberté de traiter des droits de propriété intellectuelle en
copropriété; autrement la valeur de ce droit pourrait diminuer.
Là où les copropriétaires sont dans des juridictions différentes et qu'un conflit
survient, les tribunaux du Royaume-Uni déterminent le droit de propriété selon la ou
les lois étrangères pertinentes sur la base de la localisation de la création.
Le groupe supporte les changements allant vers l'harmonisation de ces points, parce
que les différences entre les droits nationaux peuvent faire échouer les attentes des
propriétaires, qui structurent leurs relations avec les copropriétaires sur la base de
leur propre droit national. L'harmonisation de chaque droit de propriété intellectuelle
devrait être considérée tout à tour, et nous recommandons que ce processus débute
par les brevets.
ZUSAMMENFASSUNG
Es gibt im englischen Recht keine verschiedenen Arten von Miteigentum bei
Gewerblichen Schutzrechten, welche von der Herkunft des Miteigentums abhängen
würden. Unabhängig von der Entstehung des im Miteigentum stehenden Werks gibt
es zwei verschiedene Varianten von Miteigentümern, nämlich entweder
"Miteigentümer nach Bruchteilen" oder "Gesamthandseigentümer" 1 . Diese
unterscheiden sich in ihren rechtlichen Wirkungen im Todesfall eines
Miteigentümers. In dem Vereinigten Königreich ist auch das Eigentum an so
genannten Billigkeits-Titeln [equitable title] und Rechtstiteln anerkannt, die sich im
Besitz mehrerer Personen befinden.
Miteigentum ist meist vertraglich geregelt, und wegen des Prinzips der
Vertragsfreiheit ist nahezu jegliche Art von Vereinbarung zulässig. Die Rechte eines
Miteigentümers bei Diensterfindungen und Lizenzrechten unterscheiden sich je
nachdem, auf welchem Gewerblichen Schutzrecht sie basieren sowie dem
einschlägigen Gesetzestext. In der Regel müssen Miteigentümer einer Lizenz oder
einem Untervertrag über das Gewerbliche Schutzrecht zustimmen und dürfen nicht
allein über ihr Miteigentum verfügen. Allerdings können sie die Entscheidung eines
Gerichts einholen, um Streitigkeiten zwischen ihnen beizulegen.
Die Berührungspunkte zwischen dem Kartellrecht und Gewerblichen Schutzrechten
sind vielschichtig und die gesetzlichen Vorschriften beruhen überwiegend auf
Europäischem Recht. Das Vereinigte Königreich bemüht sich darum, die Rechte
Einzelner und das öffentliche Interesse in ein angemessenes Gleichgewicht zu
bringen. So ist es z.B. möglich eine Zwangslizenz zu erhalten um sicherzustellen,
dass Patente benutzt werden können.
Die Gruppe des Vereinigten Königreichs ist in der Regel der Ansicht, dass das Recht
eines Miteigentümers, frei über ein im Miteigentum stehendes Gewerbliches
1 Please note that there is no exact German equivalent to "tenants in common" and "joint
tenants".

Schutzrecht zu verfügen, Beschränkungen unterliegen sollte; anderenfalls könnte der
Wert dieses Rechts reduziert werden.
Wenn die Miteigentümer aus verschiedenen Rechtssphären stammen und es zu
Streitigkeiten kommt, entscheiden die Gerichte des Vereinigten Königreichs über das
Eigentum gemäß dem jeweils relevanten ausländischen Recht oder dem am Ort der
Entstehung geltenden Recht.
Die Gruppe unterstützt die Bemühungen um eine Harmonisierung dieser Probleme.
Die Unterschiede in nationalen Gesetzgebungen können die Erwartungen der
Eigentümer vereiteln, die ihre Beziehung mit dem Miteigentümer jeweils nach ihrem
eigenen nationalen Recht strukturiert haben. Die Harmonisierung jedes einzelnen
Gewerblichen Schutzrechts sollte der Reihe nach erfolgen. Wir würden vorschlagen,
dass Patente bei diesem Prozess den Anfang machen sollten.