Court dismisses inventor's patent claim but will consider reward

The Tokyo District Court on Thursday acknowledged Nichia Corp.’s ownership of the patent for a key semiconductor device, rejecting a suit filed by the inventor, now a professor at the University of California, Santa Barbara.

But the court recognized that Shuji Nakamura, 48, is eligible for a reward for his invention, and the trial will continue in order to settle the amount the firm should pay.

Nakamura developed the blue light-emitting diode while employed as an engineer for Nichia, a small company based in Anan, Tokushima Prefecture. He filed a lawsuit on Aug. 23 last year seeking monetary compensation and recognition that the patent for the semiconductor device belongs to him.

If the court rejects his claim, Nichia should pay him 2 billion yen for his invention, Nakamura insisted.

According to Nakamura, Nichia has filed about 80 patents related the development of the blue LED. He claimed to have developed the blue LED on his own after the company ordered him to suspend work on the time-consuming project. In 1993, he succeeded in making the device, which benefited the company enormously, generating at least 2 billion yen.

Nakamura, who left Nichia in 1999, said the firm unfairly denied him profits from his own invention.

The development of the blue LED, which is widely used in electric screens, received worldwide attention because it was vital for developing a laser for high-capacity DVDs.

In rejecting Nakamura’s claim, the court said he and Nichia had a contract at the time the device was invented that effectively gave ownership of the patents to the firm.

However, the court did say that Nakamura is still eligible for certain rewards for his achievements, in light of the Patent Law.

“On the premise that the patent belongs to the defendant,” the ruling said, the court will “consider the proper amount of rewards.”

Nakamura voiced dissatisfaction with the ruling and said he would appeal.

“Even if I win 20 million yen, I will appeal the case,” he said at a news conference.

But he added that the ruling, which acknowledged Nichia’s responsibility to reward him, may encourage other Japanese researchers to step forward. Many researchers are unaware of their rights under the Patent Law, he said.

In Japan, developers of new technologies who are employed by companies are often paid very little when their companies file for patent registration. The Patent Law states that employees are entitled to a reward for inventions made on the job if they transfer the patent right to their employer.

Nakamura was given only 10,000 yen when the patent was filed and the same amount when its ownership was officially registered.

After commercializing the invention in 1993, Nichia reportedly saw its annual sales leap from just over 20 billion yen to more than 80 billion yen last year, of which some 60 percent came from blue LED products.

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