Introduction
Intellectual property law refers to
the area of law associated with creative effort or commercial
reputation and goodwill. It covers aspects such as literature,
artistic works, films, computer programs, inventions, designs and
trademarks which have various rights such as copyright, rights in
performances, patents, registered designs, trademarks and others.1
The rationale of intellectual property is
to deter others from copying or taking unfair advantage of the work
or reputation of another. A patent is an exclusive right for a
limited time period, usually 20 years which enables its owner to
exclude others from making or using an invention as expressed in the
patent specification, and defined in ‘the claims’ of the patent
application.2
It is a form of personal property capable of being assigned, licensed
or charged by way of mortgage3
just like other intellectual property rights and operates in respect
of new, industrially applicable inventions and therefore accords a
mode of protection to these inventions, though subject to certain
standards. The grant of a patent effectively gives an inventor a
monopoly to work the invention to the exclusion of others for a
period of time, not exceeding 20 years. It is therefore important
that the owner of the patent be ascertained.
While it is presumed that the owner
of the patent is the inventor or co-inventor, the position is
different where a patent is made by an employee and in such
instances, it is duely important to ascertain the rightful owner of
such a patent; which in this study, I seek
to analyse as I unearth the ‘dilemma’ regarding the ownership of
a patent for employee inventions.
In as much as
Section 2 of the
Industrial Properties Act defines an inventor as the person who
devises the invention,4
the general rule is that a patent can only
be granted to the inventor or co-inventor.5
It is also a general rule as embodied in Section
19 (1) Industrial property Act that the right
to a patent for an invention made during the contract of employment
belongs to the employer. This as Bainbridge notes in his book
Intellectual Property
that, “a large number of
inventions are made by employees and usually, in such cases, the
employer will be the proprietor although the inventor will be named
as such in the patent as published.”6
The rationale is that new products of
labour belong to the owner7
as affirmed in Patchett v Sterling8
that, it is an implied term in a contract of
service that what a workman produces by his strength or skill of his
hand or the exercise of his inventive faculty becomes the property of
his employer.
However, there is an
exception to this position, that is, for inventions made by employees
in the course of their employment. An employee refers to a person who
works or worked under a contract of employment under or for the
purposes of a government department or a person who serves or has
served in the naval, military or air forces of the crown.9
However, it is necessary to put into
consideration the terms of the employee’s
contract of employment so as to resolve this position.
An invention made by the employee is deemed to belong to
the employer only in the following circumstances.
(i) When the invention is made in the course of the
employee’s duties such that at that time, the employee has a
special obligation to further the interests of his/her employer’s
undertaking. High level employees by the nature
of their jobs are mandated to further the company’s interests hence
they don’t own the patent to such an invention. In
Staeng Ltd’s Patents [1996] 183 although
the employee’s primary role was marketing, he had to devise new
ideas for new products. Him being a senior executive officer of the
company, he ought to know that his ideas would help his employer and
therefore he was furthering the employer’s interests. The employer
was entailed to the patent since the employee made the invention in
the course of his normal duties and under circumstances where an
invention could reasonably be expected. It was however observed by
Pumfre J in Christopher S French v Paul J
Mason10
that such an employee can still succeed.
(ii) when the employee carries out such invention in the
course of his/her normal duties as an employee or in the course of
duties specifically assigned to him/her and the circumstances must be
such that, the invention might have reasonably been expected to
result from the carrying out of the duties. For
instance, if the employee’s duties include
making inventions in the normal course of his duties such as
employees engaged in research and developmental capacity. An example
of a special assignment is where the employee is tasked to solve a
particular problem with the employer’s equipment or working
practices and he makes an invention in the course of doing such a
task. This issue arose in Harris’
Patent11
where the company did not undertake any
creative design or have research facilities and the employee’s
normal/primary duty was to sell way valves, and court held that, “the
invention was not made in circumstances that it might have reasonably
been expected from the carrying out of the employee’s normal duties
hence the employer could claim”.
In LIFFE Administration and
Management v Pavel Pinkara12
held that the invention should be made in the
course of the employee’s normal duties. The guiding factor in
determining what amounts to normal or specific duties as per Jacob JJ
is, “whether the employee is in a situation where one could
objectively expect him to make the invention.” Therefore, even
where some terms were implied by law and they evolve overtime leading
to duties, they become part of the employee’s normal duties.
However, what remains of essence remains as to whether
the invention in question could be envisaged from the employee’s
duties or if it provided a solution to a problem or contributed to
the achievement of the aim or object of the employee’s duties.13
Besides the above, the employee has ownership of the
patent for the invention where even though the invention is done
during the employee’s course of duties, it is not connected with
the duties i.e. the invention is outside the job description of such
employee. This is similarly stated in Section 19
(6) of the Industrial Property Act which adds
on that, the employee should have made the invention without use of
the employer’s materials, data, means, installations, equipments or
resources.
In order to ascertain the employee’s job description,
court employs the terms of the contract of employment (express or
implied) so as to ascertain the true owner of the invention. For
instance, in Electrolux Ltd v Hudson [1977]
FSR 312, court held that since the employee
was a storekeeper and his contract had wide terms, he was not
employed to invent hence the employer could not claim the patent.
Similarly, in Greater Glasgow Health Board’s
Application [1996] RPC 207 court in granting
application of the patent to the employee, affirmed the same
principle that since the doctor ‘s duty of treating patients did
not extend to devising new ways of diagnosing patients and he had
made the invention in his own time outside working hours, he owned
the patent. That, since he was
not contracted to research, it was a fallacy to assume that his duty
to treat patients extended to devising new ways of doing so and the
circumstances of making the invention had nothing to do with carrying
out duties. It concluded that whilst the invention might be a useful
accessory to his contractual duties, it was not really part of it.
In Harris’ Patent, it was also
held that since the employee hadn’t been
employed to invent and even still, the invention was made outside
working hours without the employer’s materials14
hence he owned the patent. This is because the invention could not
reasonably be expected from such work.
In British Syphon v Homewood
[1956] RPC 225 the defendant chief technician
in the claimant company was deemed an employee and could thus not own
the patent since he had made the invention before the date on which
his terms of employment were changed. It was held that the patent
could be assigned to the employer since at the time of making the
invention, he was still an employee of the company as per the
contract of employment.
Perhaps in relation to the above discussion, it is also
important to note that the law does recognise the contribution of
employees to their employers in respect of inventions and under
Section 19 (2)15
to note that where the employer is granted a patent for an invention
made by the employee and such invention becomes of exceptional
importance to the employer, then the employee is entitled to an
equitable remuneration taking into consideration his salary. This was
affirmed in Memco-med Ltd’s Patent [1992]
RPC 402 that where the patent is of
outstanding benefit to the employer then the employee should be
compensated for his effort in the invention.
This however, as was stated in British
Steel’s Patent [1992] RPC 117 is only
awarded in exceptional cases.
Worthington v Moore (1903) 20 RPC 41 held
that The invention might be the employee’s even though made in the
employer’s time and with his materials i.e.
the mere fact that the invention was made in the employer’s time,
and with the employer’s materials is not necessarily determinative.
This was affirmed in Mellor v Beardmore
(1927) 44 RPC 175 at 191I
where court held that, ‘the mere existence of a contract of service
in no way disqualifies a servant from taking out a patent in his own
name and entirely for his own benefit – and that notwithstanding
the fact that he has used his employer’s time and materials to aid
him in completing his invention, either express or implied, to
communicate the benefits of his invention to those who employ him.’
Conclusion
The position of the law in regards to
the inventions made by employees is a fair position since it
incorporates all the factors embodied during the employee’s making
of the invention such as to grant him the patent. It thereby grants
the patent to the employee who while operating outside course of his
employment such that the invention is not expected hence grants what
rightly belongs to the employee. It even recognizes their inventive
effort where the patent is granted to the employer through a mode of
compensation.
BIBLIOGRAPHY
STATUTES
Industrial Property Act 2014
TEXTBOOKS
Catherine Calston, Principles of Intellectual Property
Law (1999) Cavendish Publishing
Cornish William, Cases and Materials on Intellectual
Property 5th
Edition, (2006) Sweet & Maxwell London
Cornish William, David Llewellyn; Intellectual Property;
Patents, Copyrights, Trademarks & Allied Rights 5th
Edition, Sweet & Maxwell (2003) London
David Bainbridge, Intellectual Property 8th
Edition, Pearson Education Ltd (2010) London
CASES
British Steel’s Patent [1992] RPC
117
British Syphon v Homewood [1956] RPC 225
Christopher S French v Paul J Mason
Electrolux Ltd v Hudson [1977] FSR 312
Greater Glasgow Health Board’s Application [1996] RPC
207
Harris’ Patent
LIFFE Administration and Management v Pavel Pinkara
Mellor v Beardmore (1927) 44 RPC 175 at 191
Memco-med Ltd’s Patent [1992] RPC 402
Patchett v Sterling
Staeng Ltd’s Patents [1996] 183
Worthington v Moore (1903) 20 RPC 41
1
Bainbridge at pg.309
2
Claims state out the exclusive right conferred by the patent.
3
Supra note 1 at pg.440
4
Industrial Property Act 2014
5
Supra note 3 at pg.447
6
Ibid pg.70
7
Cornish & Llewellyn pg. 264
8
(1995) 72 RPC 50
9 Supra
note 6 pg. 378
10
[1999] FSR 597
11
[1985] RPC 19
12
[2007] RPC 667
13
Supra note 9 pg. 480
14
Cornish pg. 145
15
Supra note 4
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