|
|
 |
|
|
 |
IP News Flash |
|
Judge Orders Canon to Pay Additional Compensation to Former
Employee In An Employee Invention Suit |
|
A decision was passed by the Tokyo District Court on January 31,
2007, to award former Canon employee, Kazuo Minoura, 33.53 million yen
(US$335K) for a laser beam printer (LBP) technology he invented during
his employment with the Japanese camera and printer manufacturing giant.
The invention involved the elimination of so-called, “stationary
ghost images,” which are unwanted lines that would appear on printouts
of older LBP models. The plaintiff successfully invented a method to
eliminate these lines and the invention was patented by Canon in 1993.
The presiding Judge, Ryuichi Shitara, stated that the above
compensation was calculated based on the value of the technology, the
company contribution, and the existence of alternative technology. He
said “Although this invention successfully eliminated [the problem], it
is only one of many competing methods, and could not be defined as an
irreplaceable patent.” He continues to say that “the cause and the means
for resolving the problem had already been defined prior to the time of
the invention as seen in Canon’s technical document, and that the
invention could have easily been conceived based on already known
technology.”
Minoura was paid 850,000yen (US$8500) for his invention while he
was employed with Canon (he was employed between 1968 and 2002). For
this lawsuit, he was demanding 1 billion yen in compensation. However,
the court calculated Canon’s overall profit from this invention to be
1.1 billion yen (US$11million) with Minoura’s contribution at 3% of
over-all profits. The resulting compensation was set at 33.52 million
yen, minus the previously paid-out amount.
Both plaintiff and defendant expressed dissatisfaction with the
ruling and plan to appeal.
More and more Japanese employees are emboldened to turn to the
courts to settle their complaints with regards to employee inventions
now that lifetime employment is no longer the norm. In contrast to the
US where employees are routinely compensated on the basis of internal
company regulations, the Japanese courts can intervene and order the
employer to award higher compensatory payment if the employee finds the
amount inadequate. This is thanks to a statute in Article 35 of the
Japanese Patent Law that states that an employee/inventor is entitled to
receive “reasonable remuneration” when assigning the patent to his or
her employer. The problem with the statute is that it does not clearly
define what is meant by “reasonable remuneration”. Nor does it state the
formula for which to calculate employer profit and contribution to an
invention. This is something unique to Japanese law and American
companies need to be aware of it. (Posted February 5, 2007)
|
