PA 42 & 43 - Enforceability of contracts re employee inventions

Question 1

What is S42 concerning

Answer 1

Enforceability of Employee Contracts

Question 2

What type of contracts does S42 apply to

Answer 2

S42(1)
Applies to any contract relating to inventions made by an emplyee,
a) with his/her employer, or
b) with someone else at the behest of their employer.

Question 3

What makes a contract unenforceable re S42

Answer 3

S42(2)
Any TERM diminishing the employee’s rights (e.g. from S39-41) is unenforceable in respect of those rights…

Question 4

What does S42 not extend to

Answer 4

S42(3)
This does not extend to any duty of confidentiality (e.g. an M.O.D. inventor)

Question 5

Who does Section 42 apply to

Answer 5

extends to Crown emplyees

Question 6

What does “term” mean in S42(2)

Answer 6

By specifying term the whole agreement is not lost if the term is SEVERABLE (i.e. does not go to the heart of the contract)

Question 7

What do rights mean re S42

Answer 7

This is vague and open to interpretation

Question 8

What does the confidentiality caveat mean in S42

Answer 8

That a patent application of an employee must not breach the employers confidence.

Question 9

What can an employer do if their confidentiality has been breached with a patent application

Answer 9

Can get an injunction banning the application if there is a risk of disclosure - but this does not entitle the employer to file instead

Question 10

What limits S39-42

Answer 10

S43(2)
S39-£42 are limited to employees:
a) MAINLY EMPLOYED IN THE UK (otherwise consult overseas associates) or
b) if unclear where mainly employed, then if they are attached to a UK place of business

Question 11

When does an employee not make an invention S43

Answer 11

S43(3)
An employee does not make an invention if they merely give advice or assistance to the actual inventor

Question 12

What happens re overseas patents S43

Answer 12

S43(4)
The employee can ALSO claim compensation under S39-42 for the benefit to the employer from ensuing OVERSEAS patents and other protections arising from the invention

Question 13

Does the employees rights end on death

Answer 13

S43
(5) Calculated benefit of the patent/invention to an employee in S40-41 includes that to his inheritors
(6) Compensation for an employee may be pursued by his inheritors

Question 14

When does the calculation for benefit to an employer end S43

Answer 14

Calculated benefit to EMPLOYER from an invention does not extend beyond the period where the patent is IN FORCE