Inventions, patents and copyright
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Summary
General:
Summary
Future
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Practical example
Action point checklist
Key
references
Questions and answers
Employee inventions
Inventions owned
by the employer
The ownership of
copyright
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NHS |
NHS 3.825There is currently no information specific to NHS employers on inventions, patents and copyright.
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General |
3.825
The ownership of the copyright in any literary, artistic or dramatic work written or produced by an employee in the course of his or her employment likewise vests in the employer. (See 3.830 The ownership of copyright)
3.826 There are no future developments.
3.827 In some industries, such as the pharmaceutical and textile industries, scientists, chemists and the like are employed specifically to design and produce new products or processes. Others will be developing new plant, machinery, tools, equipment and electrical goods.
The Patents Act 1977, section 39 states that an invention made by an employee will be taken to belong to his or her employer if:
it was made in the course of the employee's normal duties in circumstances such that an invention might reasonably be expected to result from the carrying out of those duties; or
it was made in the course of the employee's duties, and the nature of those duties and the employee's particular responsibilities were such that he or she had a special obligation to further the employer's interests.
It follows that this rule does not apply to those employees (for example workers on a production line) who are neither scientists nor engineers and who are not specifically employed to invent new products, tools, machinery or equipment.
3.828 Sean is a kitchen porter in a busy hotel and is employed to wash and stack dishes.
He comes up with a design for a new, more efficient type of dishwashing machine that is capable of being patented.
His employer would be hard put to convince a court that doing so was within the scope of his normal duties. In short, he is perfectly within his rights to apply for and obtain a patent and to be mentioned as the inventor of that new machine.
If the patent is granted, Sean may grant a licence or licences to another person or persons to supply the product or work the invention, as the case may be, on reasonable terms.
Inventions owned by the employer
3.829 If a company or other organisation owns an invention made by one of its employees, that need not be an end to the matter. Once a patent has been granted, the inventor may apply to the Comptroller-General of Patents, Designs and Trade Marks or, if need be, to the High Court (or, in Scotland, the Court of Session) for an award of compensation - that is to say, a fair share of any outstanding benefit that his or her employer has derived, or may reasonably expect to derive, from the patent.
An order directing the employer to pay compensation to the employee may be an order for the payment of a lump sum or for periodical payments, or for both (Patents Act 1977, section 40).
In determining what constitutes fair compensation, the court or the comptroller will, among other things, take into account:
the nature of the employee's duties, and the remuneration and other advantages derived from his or her employment;
the degree of effort, time and skill that the employee devoted to making the invention;
the effort and skill that any other person has devoted to making the invention jointly with the employee concerned and other assistance contributed by any other employee who was not a joint inventor of the invention; and
the employer's contribution to the making, developing and working of the invention - for example, by giving advice, by providing the necessary facilities and other technical assistance, and by offering its managerial and commercial skills.
However, these provisions do not apply to an invention made by an employee where a collective agreement provides for the payment of compensation in respect of inventions of the same description as that invention to employees of the same description as that employee (Patents Act 1977, sections 40 and 41, as amended).
Any term in a contract of employment or related agreement that purports to override an employee's rights under the Patents Act 1977 is unenforceable against that employee to the extent that it diminishes his or her rights in any invention of any description made by the employee, but does not derogate from any duty of confidentiality owed by the employer to that employee by virtue of any rule of law or otherwise (Patents Act 1977, section 42(2) and (3)).
This rule does not, however, apply to a term in a collective agreement that provides that the payment of compensation in respect of a particular description of employee inventions will supersede the rights of the individual employee under the Patents Act 1977, so long as the agreement applies to a particular group or description of employees and to inventions of all employees of the same description as that employee, and envisages inventions of the same description as the invention produced by the employee. In the event of a dispute, it will be for the courts to determine the issues.
3.830 Under the Copyright, Designs and Patents Act 1988, the copyright in an original literary work or design comes into being as soon as that work is produced. Furthermore, the copyright persists for the lifetime of the person who produced that work and for 75 years after his or her death. It is as well to add that (unlike in the patenting of inventions), there is no equivalent procedure for registering the ownership of the copyright in any such work. The ownership vests automatically in the relevant author of that work or design.
However, that is not necessarily true of material produced by employees. The Copyright, Designs and Patents Act 1988, section 11 states that the copyright in any literary (dramatic or artistic) work or design produced by an employee in the course of his or her employment belongs to the employer - unless there is an express agreement to the contrary.
It follows that in their capacities as employees, advertising executives, public relations managers, computer programmers, draughtsmen and women, and the like, cannot claim ownership of any material written or produced by them for the purposes of promoting their employer's business interests. That is what they are paid to do.
A security guard, on the other hand, is employed to patrol his or her employer's premises. If he or she writes a best-selling novel during duty hours, he or she might well be fairly disciplined or dismissed for misconduct, but would nonetheless retain the ownership of the copyright in his or her book.
While employees are legally entitled to a fair share of any outstanding benefit that accrues to their employer from an invention they have made in the course of their employment, there is no equivalent provision in the Copyright, Designs and Patents Act 1988.
In short, an employee has no legal right to claim a share of the royalties earned by his or her employer from the sale of a book which the employee has researched and written on its behalf (although there is nothing to prevent some contractual provision to that effect).
3.831
While employees have a common law and implied contractual duty not to disclose to unauthorised third parties any confidential information concerning their employer's business activities, trade secrets, pricing policy, product development plans, marketing strategy, etc, and that duty persists after the employment relationship has ended, consider inserting an express term to that effect in the contract of any employee who has access to such information.
So far as the issue of copyright ownership is concerned, consider inserting a clause in the contract of employment of people whose work involves the writing of publicity material, brochures, training manuals, software programs, instruction booklets, research reports, and related material, stating that the ownership of such material vests with you, the employer.
Where appropriate, ask personnel engaged in sensitive work to give a written undertaking to submit the manuscripts of magazine articles, theses, etc for scrutiny by a senior member of management (or by the company's solicitors or legal department) before that material is released for publication.
In contracts of employment, staff handbooks, etc remind employees of their common law duty to return all company property in their possession (documents, notes, manuals, computer disks, etc) on the termination of their employment. At the same time, ask them to sign a form acknowledging receipt of any company property issued to them during their employment as well as a declaration to the effect that they will return that material on the termination of their employment.
3.832
Legislation
Patents Act 1977
Copyright, Designs
and Patents Act 1988
Patent Rules 1995 SI 1995/2093
Cases
Prout v British Gas plc [1992] FSR 478
3.833
Q162: Who owns inventions created by employees?
An invention made by an employee belongs to the employer if it was made in the course of his or her employment. An employee's invention that was developed outside his or her employment belongs to the employee.
Q163: Does an employee have any rights to inventions owned by the employer?
Should an invention owned by the employer be patented, the inventor employee is entitled to a fair share of the benefit that the employer has derived, or may reasonably expect to derive, from the patent. He or she can apply to the Comptroller-General of Patents, Designs and Trade Marks or, if need be, to the High Court for an award of compensation.
Q164: Who owns copyright on literary works or designs?
The copyright of any literary (dramatic or
artistic) work or design produced by an employee in the course of his or her
employment belongs to the employer unless there is an express agreement to the
contrary. Employees have no legal right to claim a share of the royalties earned
by their employer from the sale of a book that the employee has researched
and written on its behalf.
