Right to employees' inventions
39.-(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if -
- (a) it was 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; or
- (b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking.
(2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.
(3) Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done -
- (a) by or on behalf of the employee or any person claiming under him for the purposes of pursuing an application for a patent, or
- (b) by any person for the purpose of performing or working the invention,
shall be taken to infringe any copyright or design right to which, as between him and his employer, his employer is entitled in any model or document relating to the invention.
Notes:
Manual of Patent Practice
LIFFE v Pinkava - entitlement of employee invention filed abroad; approved by the Court of Appeal (see IPKat commentary)
Harris' Patent [1985] RPC 19 - nature of employee's duties; any special obligation is dependent on the employee's status in the company and how wide-ranging his responsibilities are
4 step test (from LIFFE v Pinkava) for determining whether invention belongs to employer:
- What were the normal duties of the employee?
- What duties outside the normal duties was specifically assigned to the employee?
- Were the inventions in issue made in the course of those duties?
- If so, were the circumstances in either case such that an invention might reasonably be expected to have resulted from the employee carrying out those duties?
In Paul Auckland v Enderby Construction Ltd (BL O/343/06) (case summary here), the Patent Office Hearing Officer decided entitlement of the patent in suit based on the LIFFE four step test, considering the nature of the employee's duties and his position in relation to his employee.
