CHAPTER ONE – INTRODUCTION
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Employee inventions are inventions created by someone who is an employee of another person or corporate entity, their relationship to their employer and the nature of their duties as an employee means that the right to apply for a patent to an invention created by the employee vests with the employer. However, there are many variables to determine whether the employment relationship is effective and operates to vest those rights in the employer. This book will explain the relationships and how rights operate. Employment relationships might seem straight forward, but problems can arise; especially if the employee has more than one employment relationship, is engaged in a peculiar way and their employment terms are unclear. Further issues in consequence of unique factual circumstances, such as if the employment is part time or short term, or if it is unclear who devised which parts of an invention and when, so that you cannot be clear if they were an employment at the relevant time. These matters can lead to disputes arising as to whether the invention was created during the course of employment or not, or whether the employee invented outside of their normal or specifically assigned employment duties, and devised aspects of the invention outside of the employment under which the employer claims the right to the patent. In this book it will shall seek to explain how to understand the consequences of these issues, by explaining how inventorship works and who is entitled to seek a patent for an invention.
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The law of patents provides for the protection of inventions, and in the UK this is governed by the Patents Act 1977. Though it is worth noting that as the UK is part of the European Patent Convention (EPC), it is possible to obtain a patent covering the UK via an application to the European Patent Office. The EPC being a unitary system of applying for patents in one place which results in an ability to obtain a number of patents, one for each jurisdiction participating in the convention. There is no such thing as a European Patent per se, it is shorthand to refer to a simplified system of obtaining nationally granted patents in each jurisdiction that are signatories to the EPC.
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Any person, either alone or jointly with another, may make an application for a patent—whether for a national patent under the Patents Act 1977 Act, or a European patent application in accordance with the EPC. An international application, similar in some ways to the EPC system, in accordance with the Patent Co-operation Treaty is also possible, and may be made by a resident or national of a contracting state, and the UK is a contracting state. Via these systems an invention may be protected across the globe provided it meets the requirements for granting a patent in each jurisdiction.
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The first part of the UK law to understand when considering employee inventions is s.39 of the Patents Act. It provides that an invention made by an employee belongs to the employer if made ‘in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties.’ The law also considers where you work as s.81 states that s.39 only applies if the employee was mainly employed in the UK, or if the employer had a place of business in the UK to which the employee was attached and the employee was not mainly employed in another country – s.43(2).
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The purpose of this chapter is to highlight certain issues of importance, that it may help to consider if you are determining whether an invention is an employee invention or not. When determining if an invention belongs to an employer, there are three questions to ask: (1) What were the normal duties of the employee, (2) what, if any, specific duties were assigned and (3) might an invention have resulted and if so then might it be expected? The answers to those questions if showing that the invention was devised from the employee’s duties and an invention might be expected to confirm that the invention belongs to the employer.
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There can be circumstances however, where the employee has carried out work with others (whether fellow employees, external contractors, or others they know who are not connected to the employer). For example, if a business relies on employees working alongside independent contractors to conduct research and to invent new products, is the correct contractual structure in place so as to be clear as to the ownership of any resultant invention? If the independent contractor is, for example, the inventor, the ownership may not be solely that of the commissioning business, unless the engagement contract makes this clear. Answering these questions assists in understanding who is entitled to apply for a patent.
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The employee invention, whilst starting with a natural assumption that their invention will be owned by their employer, is only a starting place. Whether an invention is one created by an employee, and the nature of the relationship between the person believed to be an employee and their employer, turns on facts. Only when you are sure of the facts and relationship can you determine who owns an invention.