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Arina Gorbatyuk

Arina Gorbatyuk
Postdoctoral researcher
Centre for IT & IP Law
Sint-Michielsstraat 6 - box 3443
3000 Leuven
Belgium
room: 04.22

tel: +32 16 32 37 52
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Arina Gorbatyuk is a PhD Fellow of the Research Foundation Flanders (FWO) at the KU Leuven Center for IT and IP Law (CiTiP). Arina writes her PhD thesis entitled ‘Rethinking IP Ownership in the Context of Open Innovation’ under the supervision of Prof. Geertrui Van Overwalle (CiTiP) and Prof. Esther van Zimmeren (University of Antwerp). In her research she focuses on the challenges collaborating partners encounter while allocating the ownership of jointly developed IP, in particular patents and trade secrets.

Arina joined the centre in October 2012 as a researcher within the interdisciplinary research program ‘Open Innovation: The Interaction between Legal Architectures & Innovation Strategies’ of the СiTiP and the Department of Managerial Economics, Strategy and Innovation (MSI, KU Leuven). From October 2012 until September 2015 she was also involved in a consultancy project for the European Space Agency (ESA) on IP Ownership and Rights of Use in ESA. In 2013 and 2014 she coached a KU Leuven team for the ICC International Commercial Mediation Competition in Paris. Since January 2015 Arina co-coordinates a course ‘Problems of IP and ICT in Practice’ of the LL.M. in IP Rights and ICT Law.

Before joining the centre Arina obtained her Bachelor degree in law at Moscow State Institute of International Relations (University) (MGIMO) of the Ministry of Foreign Affairs of Russia in 2010. After the completion of her bachelor education, she was granted an Erasmus Mundus Scholarship which allowed her to follow a joint, semester-based Master program ‘The European Master in Transnational Trade Law and Finance (EMTTLF)’ in 2010-2012, coordinated by the University of Deusto, Tilburg University and University of Strasbourg. Within the framework of the EMTTLF, Arina also graduated from the Centre for International Intellectual Property Studies (CEIPI) of the University of Strasbourg in 2012 with an L.LM in European and international Intellectual Property Law. Amid her studies at the Master-level Arina completed a three-month internship at the International Federation of Pharmaceutical Manufacturers & Associations (IFPMA) in Geneva.

 

Publications

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  • Gorbatyuk, Arina; Kovács, Adrián; 2019. Patent notice (failure) in the era of Patent Monetization. FEB Research Report MSI_1906 Publisher: KU Leuven - Faculty of Economics and Business
    LIRIAS2812001
    description
    The most commonly provided economic rationale for the patent system is that it incentivizes inventive effort that may not be carried out in its absence. In addition to this utilitarian rationale, economic and legal scholars often refer to a second rationale that underlies the patent system – the dissemination of technological information to the public. This notice function is thought of as an important mechanism to enable a more efficient investment in innovation by stimulating further (cumulative) innovation, reducing wasteful duplicate innovative effort and limiting unnecessary litigation. Consequently, courts have placed a great deal of emphasis on the notice function and have described it as the ’quid pro quo’ of granting patent owners the right to exclude. Whereas the notice function is traditionally confined to the adequate disclosure of inventions, we propose that in light of the recent trend towards rapidly growing markets for patent monetization it should also encompass the adequate disclosure of the holders of rights to a patent. Specifically, in this paper we argue that in addition to knowing in detail the boundaries that define a claimed invention, knowing the identity of the parties that hold rights to this invention is a fundamental prerequisite for any patent transaction to occur. Based on a comparative analysis of the provisions of six of the most proficient patent offices worldwide, we illustrate that although current provisions warrant an adequate disclosure of the identity of the initial patent applicant(s), they provide the public with only limited opportunities to identify and track subsequent changes of ownership. Although most patent authorities require parties to file notice when the rights to a patent are assigned, provisions for strictly enforcing this requirement are absent. This allows for a lack of transparency concerning patent ownership, which may hamper rather than facilitate technology transactions.

    Published
  • Gorbatyuk, A; 2019. Rethinking IP ownership in the context of open innovation..
    LIRIAS2815296
    description
    Open innovation (OI) has gained significant popularity in recent decades. It refers to a model for innovation whereby entities increasingly rely on external knowledge and external partners throughout the innovation process. This model has been embraced by numerous companies and its relevance has also been recognized by public institutions. In negotiating R&D partnerships, international partners encounter challenges with contract clauses allocating the ownership of jointly developed technologies due to differences in cultural and legal backgrounds. Many legal systems prescribe a regime of so-called co-ownership - which often requires approval from the co-owners for important decisions in exploiting the technologies (e.g. licensing, selling). Moreover, the detailed ownership rules may differ between countries. This could result in high transaction costs, delays and conflicts. Therefore, in practice international partners tend to "contract out" of the legislative co-ownership rules and set up alternative Intellectual Property (IP) ownership arrangements in their agreements. This research project aims to analyse (1) the differences between the legal frameworks on IP ownership allocation in several countries, (2) the alternative contractual IP ownership arrangements and (3) the extent to which legislators could adjust their legislation and stakeholders could adapt their contractual arrangements in order to facilitate engagement in OI and international collaboration.

    Published
  • media
    Gorbatyuk, Arina; 2018. Will EU Member States implement the EU Directive on trade secrets on time?. Publisher: CiTiP Blog
    LIRIAS1994528
    description
    The Directive (EU) 2016/943 of the European Parliament and of the Council on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure was adopted on 8 June 2016. The aim of the Directive is to standardise the national laws on trade secrets of the EU Member States. According to Article 19, all EU Member States are obliged to incorporate the minimum level of protection required by the Directive into their national laws before the 9th of June 2018. The purpose of this blog is to verify whether the necessary legislative changes have taken place in selected Member States and to assess whether those countries will implement the Directive on time.

    Published online
  • media
    Gorbatyuk, Arina; 2017. Will the Unitary Patent system simplify the patent application process for inventions generated in international R&D collaborations?. Publisher: CiTiP Blog
    LIRIAS1994527
    description
    To keep up with rapid technological developments, companies often join their R&D efforts. Those R&D collaborations, of local or international nature, can be of different forms, have different purposes and involve different actors. Generally the purpose of such collaborative efforts is to co-develop new valuable knowledge. If an invention is developed during such a joint R&D project, collaboration partners would often need to align their patent strategies and jointly decide upon essential issues, such as who will apply for a patent and in which patent office(s) the application should be submitted. Those discussions may be quite time consuming and heated. The aim of this blog is to evaluate whether the existence (in the future) of a unitary patent would prune down those discussions. The latest barriers for the unitary patent package (UPP) to enter into force will not be addressed in this blog.

    Published online
  • media
    Gorbatyuk, Arina; 2017. Should companies give confidential access to their trade secrets?. Publisher: CiTiP Blog
    LIRIAS1711801
    description
    For many years strengthening the level of trade secret protections has been a goal of legislators both in the EU and the US. Last year, finally, the long lasting negotiations brought some results. Two important documents have been signed on both sides of the Atlantic. First, on May 11, 2016, President Obama signed the Defend Trade Secrets Act (DTSA). The same month, on May 27, the European Council approved the text of the Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (Directive). Those two legislative acts were seen as important steps forward to stronger protection and a more ‘harmonized’ understanding of (among other important aspects) what trade secrets are and how trade secret protection can be established. Those changes were considered important for companies involved in international business and frequent exchange of know-how with foreign companies. In particular, it is indicated in the Directive that open innovation is ‘an important lever for the creation of new knowledge, and underpins the emergence of new and innovative business models based on the use of co-created knowledge’ and that ‘collaborative research, including cross-border cooperation, is particularly important in increasing the levels of business research and development within the internal market.’ The relevant question that arises is, whether companies, following these new legislative improvements, will feel more secure to provide access to their trade secrets to third parties.

    Published
  • media
    Gorbatyuk, Arina; 2016. How can companies share an invention developed in collaboration?.
    LIRIAS1711769
    description
    Due to the increased complexity of new technologies, companies often cannot keep up with the technological progress and struggle to rapidly bring innovative products to the market. The solution to these problems seems to be quite evident: find other companies that have the necessary knowledge, facilities, time, resources and collaborate! However, it is not all that simple. When engaging in a joint R&D project, companies should realize that they would need to share results of their collaborative effort with each other. Thus, it is essential that collaborating companies establish upfront how they are going to coordinate and administer jointly developed inventions. Otherwise those inventions may create more problems than solutions.

    Published
  • presentation
    Gorbatyuk, Arina; 2016. Who Owns Inventions and Know-How Generated in R&D Partnerships?.
    LIRIAS1711854
    description


    Published
  • presentation
    Kovács, Adrián; Gorbatyuk, Arina; 2016. Patent Notice in the 'Era of Open Innovation' - Issues Concerning the Disclosure of Patent Ownership.
    LIRIAS2242883
    description
    Open innovation refers to a trend whereby organizations increasingly rely on access to technologies developed by external parties and provide access to their own technologies to generate revenues. The trend towards open innovation processes is manifested in increasing transactions on markets for technology. Within the open innovation framework, patent protection is explicitly recognized as a mechanism that enables firms to benefit from purposive knowledge flows whilst limiting unintended knowledge spillovers. Patent regulations facilitate the exchange of patent-protected technologies by providing the legal basis for the transferability of these technologies allowing their owners to assign or license them to other entities. Furthermore they impose requirements for the adequate disclosure of inventions as well as for establishing their ownership. This, in principle, creates a level of transparency concerning ‘who-owns-what’ that is fundamental to the functioning of technology markets. In this paper, we highlight that whilst patent offices impose strict regulations concerning the adequate disclosure of the identity of the initial applicant(s) of a patent, their regulations are far less strict with respect to the disclosure of ownership once patent rights have been assigned to other parties. In other words, we argue that the likelihood of identifying the actual owner(s) of a patent is significantly reduced following changes in the ownership of the patent. Hence, somewhat paradoxically, whilst a greater transparency of ownership facilitates technology transactions a greater number of such transactions might actually decrease the transparency of ownership in return. We highlight that this is the result of insufficient requirements for the registration of assignments as currently imposed by patent offices and the enforcement thereof and illustrate the universal nature of this issue based on a comparative analysis of rules on the establishment of patent ownership throughout the patent lifecycle of one regional – the European Patent Office and five national patent offices – the United States Patent and Trademark Office, the Japan Patent Office, the French Institut National de la Propriété Industrielle, the German Patent and Trademark Office and the United Kingdom Intellectual Property Office. Our analysis reveals that the patent application stage, at which the initial title in a patent is established, is the only stage during the patent lifecycle at which the adequate disclosure of holders of rights to a patent is strictly enforced. Although all patent offices require parties to file notice when a patent is transferred, no provisions exist for strictly enforcing the failure to meet this requirement. We interpret this observation in light of the recent trend towards open innovation and argue that in their current form, regulations allow actors that hold rights to patents to benefit from remaining hidden rather than disclosing themselves. We conclude with an appraisal of current legislative initiatives aimed at improving the transparency of ownership.

    Published
  • media
    Gorbatyuk, Arina; 2016. Resolving IP disputes in Open Innovation – Is IP mediation the way to go?.
    LIRIAS1711756
    description
    It has been observed that more and more organizations tend to rely on external knowledge and external partners throughout the innovation process. In the managerial and economic literature this trend is referred to as open innovation (OI). Organizations can engage in OI activities through conducting, for instance, license, assignment and/or R&D collaboration agreements. Although organizations can undeniably benefit from interactions that transcend their boundaries, such interactions regularly give rise to conflicts. Given that the exchange of knowledge is frequently protected through intellectual property (IP), many disputes within OI relate to IP. The question that arises is how to resolve such disputes in the most efficient way.

    Published
  • journal-article
    Gorbatyuk, Arina; Van Overwalle, Geertrui; van Zimmeren, Esther; 2016. Intellectual Property Ownership in Coupled Open Innovation Processes. IIC - International Review of Intellectual Property and Competition Law; 2016; Vol. 47; iss. 3; pp. 262 - 302
    LIRIAS851170
    description
    Open innovation (OI) is high on the commercial and political agenda. It revolves around R&D partnerships, set up to keep up with rapid technological developments. In negotiating such R&D partnerships, the allocation of intellectual property (IP) ownership, in particular patent ownership and trade secret control, is a difficult task. The lack of harmonization of IP law leads to challenges both for collaborating parties and third parties. Many legal patent systems, for instance, impose co-ownership as a default regime for jointly developed technologies. However, under such a regime the exploitation rights may significantly vary and may prescribe the consent of other owners in the case of use, licensing and sale of co-owned patents. These consent requirements may harm the interests of collaborating parties and complicate future exploitation of the technology concerned. To avoid this complexity, parties can establish their own applicable rules. The allocation of trade secret control, on the other hand, is only done on a contractual basis, as legislators do not foresee any default rules on the matter. Typically, the confidential nature of contracts will preclude third parties from obtaining information needed as a basis for initiating an OI process, such as licensing. Neither the default regime, nor the contract-based regime provides the necessary level of transparency and legal certainty to secure the smooth exploitation of jointly developed patents and trade secrets and future engagement in OI for both collaborating parties and third parties. The present paper examines the current IP framework for coupled OI processes in great depth. In addition, this paper reviews recent legislative initiatives to improve legal certainty and transparency, both at the national and EU level, and lists a number of potential legislative measures that could be imposed to further strengthen the legislative framework.
    Publisher: Springer
    Published
  • media
    Gorbatyuk, Arina; Kovács, Adrián; 2016. Anonymously Real or Really Anonymous? – Who Is the REAL Owner of a Patent?.
    LIRIAS1711755
    description
    In today’s knowledge-based economy, firms’ innovative efforts rely more and more on technological knowledge that is generated by entities that reside outside their boundaries. This trend towards more ‘open’ innovation processes has resulted in the licensing and trading of patent rights on a previously unprecedented scale. The initiation of such transactions relies to a great extent on the availability of information concerning ‘who-owns-what’. Although the patent system encourages the public disclosure of inventions – the ‘what’– it does insufficiently warrant the disclosure of the identity of patent owners – the ‘who’.

    Published
  • presentation
    Gorbatyuk, Arina; 2016. Legal perspective on the concept of openness in open innovation.
    LIRIAS1711478
    description
    The notion of open innovation (OI) was introduced in 2003 by Henry Chesbrough who claims that since approximately 1980 public and private entities gradually from a closed innovation (CI) model to an OI model through increasingly relying on external partners and use external knowledge throughout the innovation process. Despite the fact that the concept has gained significant attention of academics and practitioners, its broad scope is subject to criticism. The proposed definition suggests that any type of knowledge exchange transcending the boundaries of an entity should be considered an OI activity. Scholars question whether it is sufficient to apply such a narrow dichotomy (CI versus OI process) to identify whether an organization is open or closed and suggest that in reality OI incorporates variable degrees of openness. They denote that some innovation activities shifted may be less open depending on particular factors, e.g. openness of the knowledge outcomes and their accessibility to third parties. I argue that the choice of IP protection mechanisms and contractual clauses may also influence the level of openness of an innovation activity by defining the scope of exploitation rights and the possibility to further engage in OI activities granted to an external party.

    Published
  • presentation
    Gorbatyuk, Arina; 2016. The use of IP mediation in open innovation.
    LIRIAS1711853
    description


    Published
  • presentation
    Gorbatyuk, Arina; Kovács, Adrián; 2016. Patent Provisions as a Barrier to Open Innovation? Issues Concerning the Disclosure of Patent Ownership.
    LIRIAS1711852
    description
    Open innovation refers to a trend whereby organizations increasingly rely on access to technologies developed by external parties and increasingly provide access to their own technologies to generate revenues. This trend is manifested in a growing market for patent monetization wherein patent rights are licensed and traded on a previously unprecedented scale. The appropriate functioning of this market relies to a great extent on the notice function of the patent system, which is commonly ascribed to bethe quid pro quo of granting exclusive rights to patent owners. The ability to know in detail the boundaries that define a claimed invention and the parties that hold rights to this invention is undeniably a fundamental prerequisite for any patent transaction to occur. In this paper,we argue that whilst current patent provisions suffice to warrant an adequate disclosure of the identity of the initial patent applicant(s), they provide the public with only limited opportunities to identify and track subsequent changes of ownership. This allows for a level of anonymity concerning patent ownership,which rather than facilitating technology transactions can instead be exploited as a competitive tool to assert patents against parties that already practice the patented technology. We illustrate the universal nature of this issue based on a comparative analysis of thepatentprovisionsof six patent offices with respect tothe recordation of patent ownership changes. Our findings reveal that whilst most patent authorities require parties to file notice when the rights to a patent are assigned, provisions for strictly enforcing the failure to meet this requirement are absent. As a potential improvement to existing patent provisions, we propose four minimal requirements that future initiatives by patent offices should impose to warrant a more adequate, accurate and timely disclosure of patent ownership information.

    Published
  • presentation
    Gorbatyuk, Arina; 2014. Open Innovation and IP - a Legal Perspective.
    LIRIAS1711855
    description


    Published
  • presentation
    Gorbatyuk, Arina; Van Overwalle, Geertrui; van Zimmeren, Esther; 2014. IP Ownership in Coupled Open Innovation Processes.
    LIRIAS1708649
    description
    Open innovation (OI) is high on the commercial and political ‘agenda’. It is observed that more and more R&D partnerships facilitating coupled OI activities are established to keep up with the rapid technological developments. The allocation of Intellectual Property (IP) ownership is a difficult task during the negotiation of R&D partnerships. The challenge is complicated by the lack of regulation and harmonization of IP legislations. For instance, many legal systems impose co-ownership as a default regime for jointly developed technologies. The exploitation rights, however, may significantly vary and prescribe the consent of other owners in case of use, licensing and sale of co-owned patents. Both the consent requirement and need to consult a considerable number of legal systems may harm interests of collaborating parties and complicate or substantially delay future exploitation of technology. To avoid the complexity, parties can establish their own applicable rules. The confidential nature of contracts will, however, preclude third parties from obtaining the relevant information required for initiating an OI process. Our analysis illustrates that neither the default regime nor contract-based regime provides the necessary level of transparency and legal certainty to secure the smooth exploitation of jointly developed IP and future engagement in OI. After examining the recent legislative initiatives to improve legal certainty and transparency, both at the national and EU level, we suggest potential legislative measures that could be imposed to improve the legislative framework.

    Published
  • presentation
    Gorbatyuk, Arina; 2013. Rethinking IP Ownership in the Context of Open Innovation.
    LIRIAS1711856
    description


    Published