PA 39 - Rights to employee's invention Flashcards
What does S39 cover
Rights to Employee’s inventions
When does an invention by an employee belong to their employer?
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.
When does an invention belong to the employee
S39(2)
Any other invention (other than those specified in S39(1)) belongs to the employee
What are the consequences of the employee owning their invention
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
What defines an employee
Generally someone who has a contract of service or apprenticeship with an employer
What are an employees “duties”
It is not ovely specific, more a “role” as stipulated in a contract, not a specific job description
What falls within the scope of S39
Invention is broader than patentable invention, as it can be determined prior to application or grant
Who does S39 apply to
Employees normally resident in the UK and mainly employed in the UK
What happens re S39 if other agreements are in place
In principle S39 overrides any other agreement since any agreement cannot diminish an employees rights
Can S39 result in co-ownership between employer and employee
NO
Where is the burden of proof for S39
The burden of proof lies with the employer, as the default position is ownership by the employee
What are normal duties S39
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
What are specially assigned duties
The main thing to think about is the “where inventions may reasonably arise”
What is a special obligation
Someone who is reasonably expected to further the interests of the employer e.g. a senior manager or fiduciary
Who won’t be an inventor
Someone who merely assists or advises the inventor is not themselves a co-inventor
What should be done when work from a group results in inventions
Try to obtain minutes or statements indicating various respective contributions of the parties involved.
Also check whether meeting like this are confidential
How can an inventor know if they are an employee
check who pays their NI - if they do, they are likely not an emplyee. If their employer does, they are an employee
What happens re S39 with students / retired lecturers etc
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
Are directors or shareholders employees re S39
Check with them directly, as often not. Request confirmation.
If they are employees, will likely fall under special obligation clause
How should you deal with contractors and other non-employees re S39
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)
What should you always check re employee inventions
Whether or NOT it was made at or in work
How do you protect yourself from issues re S39
Put an agreement in place with specific IP clauses.
