PA 39 - Rights to employee's invention Flashcards

1
Q

What does S39 cover

A

Rights to Employee’s inventions

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
2
Q

When does an invention by an employee belong to their employer?

A

S39 (1)
An invention by an employee belongs to their employer IF:
a) it was made IN THE COURSE OF NORMAL DUTIES of the employee OR in the course of additional SPECIFCALLY ASSIGNED DUTIES, AND an invention might REASONABLY BE EXPECTED to arise from them
OR
b) it was made IN THE COURSE OF THE EMPLYEE’S DUTIES and implicit in these duties is a SPECIAL OBLIGATION to further the interests of the employer.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
3
Q

When does an invention belong to the employee

A

S39(2)
Any other invention (other than those specified in S39(1)) belongs to the employee

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
4
Q

What are the consequences of the employee owning their invention

A

S39(3)
If it belongs to the employee then he has the rights to
a) the patent can be applied for and
b) the invention can be worked,
without infringing any copyright or design right that may belong to the employer as a consequence of the employee making the invention

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
5
Q

What defines an employee

A

Generally someone who has a contract of service or apprenticeship with an employer

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
6
Q

What are an employees “duties”

A

It is not ovely specific, more a “role” as stipulated in a contract, not a specific job description

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
7
Q

What falls within the scope of S39

A

Invention is broader than patentable invention, as it can be determined prior to application or grant

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
8
Q

Who does S39 apply to

A

Employees normally resident in the UK and mainly employed in the UK

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
9
Q

What happens re S39 if other agreements are in place

A

In principle S39 overrides any other agreement since any agreement cannot diminish an employees rights

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
10
Q

Can S39 result in co-ownership between employer and employee

A

NO

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
11
Q

Where is the burden of proof for S39

A

The burden of proof lies with the employer, as the default position is ownership by the employee

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
12
Q

What are normal duties S39

A

Normal duties relate to the employee’s contracted role rather than a day-to-day stipulation of their work,
they do not necessarily preclude working from home, outside normal working hoursm or using ones own equipment, although these circumstances must be evaluated to see if they are relevant

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
13
Q

What are specially assigned duties

A

The main thing to think about is the “where inventions may reasonably arise”

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
14
Q

What is a special obligation

A

Someone who is reasonably expected to further the interests of the employer e.g. a senior manager or fiduciary

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
15
Q

Who won’t be an inventor

A

Someone who merely assists or advises the inventor is not themselves a co-inventor

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
16
Q

What should be done when work from a group results in inventions

A

Try to obtain minutes or statements indicating various respective contributions of the parties involved.
Also check whether meeting like this are confidential

17
Q

How can an inventor know if they are an employee

A

check who pays their NI - if they do, they are likely not an emplyee. If their employer does, they are an employee

18
Q

What happens re S39 with students / retired lecturers etc

A

Status with a university might be vague. Ask lots of questions, re employment contracts, funding/ grant agreements etc for clauses re IP
Consider several outcomes

19
Q

Are directors or shareholders employees re S39

A

Check with them directly, as often not. Request confirmation.
If they are employees, will likely fall under special obligation clause

20
Q

How should you deal with contractors and other non-employees re S39

A

Check if an IP agreement is in place
Then check re the nature of the work.
Check whether a contract OF service (more like an employee), or contract FOR service (more a commissioner)

21
Q

What should you always check re employee inventions

A

Whether or NOT it was made at or in work

22
Q

How do you protect yourself from issues re S39

A

Put an agreement in place with specific IP clauses.