Ownership and entitlement

Question 1

What is required for ownership of an invention to pass from an employee to a company?

Answer 1

An invention belongs to an employer if:
The invention was made in the course of normal or specially assigned duties
AND
an invention could reasonably be expected to arise from these duties
OR
the invention was made in the course of the employees duties and implicit in these duties was a special obligation to further the interests of the company
NO PATENT REQUIRED!

Question 2

If owned by the employee what further rights does the employee gain?

Answer 2

they can apply for the patent
the inention can be worked and without infringing other design right or copyright that belongs to the employer
NO PATENT REQUIRED

Question 3

What is section 39 of the act

Answer 3

S39 deals with employee inventions and the transfer to a company

Question 4

What section deals with employee inventions?

Answer 4

S39

Question 5

What section deals with compensation for employees

Answer 5

S40

Question 6

what is S40 of the act

Answer 6

compensation of employees

Question 7

What is the deadline for an employee to apply for compensation

Answer 7

one year after the patent ceases to have effect

Question 8

What are the requirements for an employee to receive compensation if they are an inventor and the invention passed to the company under S39?

Answer 8

The employee made the invention
belonging to the employer FOR WHICH A PATENT HAS BEEN GRANTED
is of outstanding benefit to the employer
by reason of those facts it is just that the employee should be awarded compensation

Question 9

What are the requirements for an employee to receive compensation if they are are inventor and own a patent that is subsequently been assigned to or an exclusive right or license granted to the employer?

Answer 9

the employee made an invention
that he owned and was subsequently transfered to the employer
The compensation recieved by the employee was inadequate
and it is just that he should be awarded compensation

Question 10

What can cancel an employees right to compensation?

Answer 10

If the employee is a member of a trade union which has negotiated a pay settlement regarding inventions

Question 11

what is patent form 49

Answer 11

Caveat - request to be informed of a future event with respect to a patent
useful for an employee to know when a patent has lapsed

Question 12

If a patent has lapsed more than a year ago can an employee still claim compensation under S40?

Answer 12

perhaps the period for claiming compensation is extendable under R108(1)

Question 13

What does S41 deal with

Answer 13

The amount of compensation due to an employee if successful proceedings are brought under S40

Question 14

how is the amount of compensation due to an employee calculated under S41

Answer 14

The employee is entitled to a fair share of the benefit to the employer from the invention, the patent or application or the assignment
taking into account:
The employees duties and existing pay
the effort and skill in inventing
any co-contributors contribution
the employers contribution

Payments can be periodic or a lump sum.

Seems to be approx 3-5% depending on contribution
Only benefit during the time the patent is in force post grant pre lapse

Question 15

S42?

Answer 15

Enforcability of employee contracts.
This prevents any employment contract term from over ruling the powers of S40-41
However S40-41 do not overrule any secrecy requirements by contract or act

Question 16

Section 43?

Answer 16

definitions for employee inventions

Question 17

Who does S39-42 apply to?

Answer 17

employees must be mainly employed in the UK

if not clear where they are employed the company must have a uk place of busness

Question 18

can S40-41 apply to overseas patents?

Answer 18

Yes only employment need be in the UK