Entitlement/Ownership re employee Flashcards
What is the basic approach to entitlement?
The inventor is entitled to the invention (s 7(2)(a)), but they can be displaced if there is some other rule of law (e.g contract) (s 7(2)(b)).
Section 7 PA 1977
(1) Any person may make an application for a patent either alone or jointly with another.
(2) A patent for an invention may be granted—
(a) primarily to the inventor or joint inventors;
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;
and to no other person.
What are he remedies re entitlement?
(1) remedy should provide a reasonable opportunity for the patent to be exploited if there is demand for it
(2) Comptroller can refuse, amend, or transfer an application; can also require licensing agreements;
(3) where granted, Comptroller can amend, it to add new proprietor, or revoke the patent
(4) where an application is refused or a patent revoked, a new application can be made with the original priority date
what does section 39 PA say?
Section 39 PA
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.
What time limit applies to claims of entitlement?
a reference cannot be made if ti was made after the end of the period of 2 years beginning with the date of the grant
UNLESS it can be shown that the person registered as the proprietor of patent knew at time of grant, or of the transfer of the patent to him, that he was not entitled to the patent.
but amending claim to entitlement (e.g. for joint to sole ownership) is not a new claim
Is the character of the inventor relevant in determining if he is entitled?
This is with regards as to whether “an invention might reasonably be expected to result from the carrying out of his duties”.
In “LIFFE”, the judge ruled that it is irrelevant whether the inventor is stupid or brilliant. Judged asked why should there be a difference in ownership depending on the personality of the inventor
what is meant by “special obligation”?
From ‘Harris App’:
The wording of the paragraph, under condition (ii), clearly envisages that the extent and nature of the ‘special obligation….’ will depend upon the status of the employee and the attendant duties and responsibilities of that status.
Thus, plainly the position in this regard of a managing director whose obligation to further the interests of the his employer’s undertaking of which he is the managing director will, no doubt, extend across the whole spectrum of the activities of the undertaking, will differ from that of, say, a sales manager
What does section 40(1) say?
This section applies to compensation for invention where the employer has ALWAYS belonged to the employer.
Compensation of employees for certain inventions.
Section 40
(1) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that—
(a) the employee has made an invention belonging to the employer for which a patent has been granted,
(b) having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer, and
(c) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer,
the court or the comptroller may award him such compensation of an amount determined under section 41 below.
Time bar for claiming is 1 year from ‘cesser’.
What does section 40(2) say?
This section applies to compensation for invention where the employee has ASSIGNED invention to the employer.
Section 40
(2) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that—
(a) a patent has been granted for an invention made by and belonging to the employee;
(b) his rights in the invention, or in any patent or application for a patent for the invention, have since the appointed day been assigned to the employer or an exclusive licence under the patent or application has since the appointed day been granted to the employer;
(c) the benefit derived by the employee from the contract of assignment, assignation or grant or any ancillary contract (“the relevant contract”) is inadequate in relation to the benefit derived by the employer from the invention or the patent for it (or both)] ; and
(d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer in addition to the benefit derived from the relevant contract;
the court or the comptroller may award him such compensation of an amount determined under section 41 below.
What is meant by “outstanding” in “outstanding benefit”?
This is relevant to section 40(1) only (where employer always owned invention)
From ‘Shanks v Unilever’:
(1) the benefit to the employer exceeded what would normally be expected to result from the work
(2) “’outstanding benefit’ cannot be determined simply by comparing the income generated by the patent with the overall turnover and profitability of the employer’s undertaking”
(3)
But a straightforward comparison of profitability may be sufficient, in the case of a much smaller company
…..
From ‘Kelly and Chui v GE Healthcare’
“Outstanding” means “something special” or “out of the ordinary” and more than “substantial”, “significant” or “good”. The benefit must be something more than one would normally expect to arise from the duties for which the employee is paid
….
Superprofits test: compare profit margins on patent/invention with profits on the company’s other products
What is meant by “just” in “by reason of those facts it is just that the employee should be awarded compensation”?
‘Kelly and Chui v GE HEalthcare’ established some factors of which do not make an award unjust:
(1) delay in bringing claim;
(2) position of other employees;
(3) inventors not having complained before; and
(4) employer’s risks and investment.
In a situation in which the employee assigned the invention to the employer (s 40(2)), how is fair share of benefit employee should have for the invention determined?
Section 41 (5) In determining the fair share of the benefit to be secured for an employee in respect of an invention which originally belonged to him, the court or the comptroller shall, among other things, take the following matters into account, that is to say—
(a) any conditions in a licence or licences granted under this Act or otherwise in respect of the invention or the patent;
(b) the extent to which the invention was made jointly by the employee with any other person; and
(c) the contribution made by the employer to the making, developing and working of the invention as mentioned in subsection (4)(d) above.
