Ownership of inventions

Written by: Anthony Albutt | Published:

Respondents to our recent IP survey raised some interesting questions regarding how best to mitigate against the potential loss of technology or know-how through staff losses. In consideration of this issue, Anthony Albutt takes a closer look at first ownership rights – asking who has first claim to the IP generated by an innovative UK business

It is often the case that multiple forms of intellectual property exist in one creative process. In the course of designing a product for example, a combination of copyright, design and patent rights may exist, and multiple rights may protect the same product or design aspect. The statutes that govern ownership of IP rights in the UK are independent, which means that while there may be some common threads between them, the laws on each form of IP are separate, with the potential to cause confusion and complication to those unfamiliar with the law. In this article we will take a look at trade marks copyright, designs and patents.

Trade mark rights

There are no specific statutory provisions governing first ownership of trade marks in the UK, but the first owner will generally be the company that first issues the mark, subject to the mark not already being registered by another party.

Copyright

The author of a literary work (eg, software, manuals) or artistic work (eg, technical drawings) is generally the first owner of any copyright in it, but if the work is made by an employee in the course of employment, the employer is the first owner subject to any agreement to the contrary. Moral rights are the rights of the creator of a copyrighted work to, for example, be named as author. Moral rights are distinct from copyright in that they remain with the creator, even if the creator has assigned copyright rights to someone else.

Registered and unregistered design rights

In the UK, the designer is the first owner of any design right which is not created by commission or in the course of employment. Where the design has been commissioned it is the person commissioning the design who is the first owner of any design right in it. Where the design is created by an employee in the course of employment, the employer is the first owner of any design right in the design.

Patent rights

For a UK-resident employee inventor, if the invention was made during the course of the employee’s normal duties, or during course of duties specifically assigned to the employee,the first owner of an invention made by that employee will be the employer. In addition, UK-resident employee inventors in more senior positions, such as directors, may be considered to have a special obligation to further the interests of their employer. As a consequence, any invention made by such employees in the course of their duties will belong to the employer as the first owner of an invention.

The UK Patents Act also allows non-employed inventors to assign any future patent rights in an invention before an invention is made. For example, a contract may assign to an employer any future patent rights that arise from research work commissioned by a non-employee such as a PhD student.

If the above circumstances do not apply, the first owner of an invention will be the inventor.

IP ownership and contract law

In the UK, contract law is relevant in determining ownership of inventions made outside of employment, eg, by consulting engineers or scientists. It is important that businesses consider contracts with external suppliers and designers carefully and ensure that they include suitable intellectual property clauses. It is very common to require that any designer or sub-contractor assigns any rights to intellectual property generated through the contract to your business. Failure to comply would then be a breach of contract.

Your first step will be to ensure that the contracts of employment your staff work under include suitable and appropriate restrictive covenants. However, take note that such covenants can be interpreted narrowly by the courts making it difficult to prevent ex-employees continuing to work in your technical field.

A word of caution: having obtained rights from external designers, if you then decide not to register them (for example in the form of a patent) you do not have a monopoly right to prevent others using your technology, including the designers.The same applies to suppliers you may be cooperating with to modify or re-design existing machinery to your specific requirements. Again, make sure your contracts include suitable protective clauses.

Secure your rights with IP protection

Importantly, business owners should seek protection for their innovations. As we have discussed in this article, patent law in the UK clearly states that an invention made in the normal course of employment is the property of the employer. This means you have the right to apply for the monopoly of, say, a patent.

It follows that if you have a granted IP right you can seek to stop a competitor infringing your rights, irrespective of who they employ.

For more information contact Anthony Albutt
D Young & Co LLP
Tel: 0207269 8550
Email: aja@dyoung.com
Web: www.dyoung.com



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