Perspectives from Intellectual Property, Labour, Competition and Corporate Law
Edited by Marilyn Pittard, Ann L. Monotti and John Duns
Chapter 6: Professional and academic employee inventions: looking beyond the UK paradigm
The vast majority of inventions are devised by employees, raising the question, who is entitled to patent them? Historically, in the United Kingdom, a patent could only validly be granted to a ‘true and first inventor’. While employers were not ‘true and first inventors’ by virtue of their position as such, they did have contractual rights to the benefits of their employees’ labour, including their employees’ inventive labour. Over time this led to a recognition at common law that employers had (equitable) property rights in respect of inventions which their employees had made while performing an employment duty so to make. That was the position in the 1970s, which the UK government sought to codify in the Patents Act 1977 (UK), subject to the inclusion of certain provisions in favour of employees. The result was sections 39 to 43, which achieve the following three things. First, they create and allocate property rights in employee inventions (made after 1 June 1978) ‘as between’ the employee and employer, and thereby determine entitlement to patent such inventions and whether a patent might be revoked for having been granted to a non-entitled person. Second, they give an employee whose invention is owned by his employer a right to compensation calculated in accordance with section 41 if, having regard to the circumstances of the case, including the size and nature of the employer’s undertaking, ‘the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer’.
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