Business Protection
‘Working under commission or as a freelancer gives inventors and authors the opportunity to keep inventions and other creative works as their own property’
Feature The same applies to abstract creative works such as
literary, theatrical, musical or artistic works, which are often protected by copyright (an IP right that arises automatically when an appropriate work is created.)
Exceptions to the rule However there are exceptions. For example, if you come up with an invention or creative work whilst employed, but the invention or creative work was not made in the course of your normal duties, then, under UK law, you are the first owner. However, how do you define ‘outside the course of
the employees’ normal duties’? Sometimes, this can be clear cut – for example, if you work for a catering company and come up with an invention that improves the steering in a car, the invention is obviously outside your normal duties. Yet what if you create a new form of packaging? This could be connected with your job if it could be used in food packaging, and so discussions with your employer may be required to determine first ownership. Unfortunately, these can turn nasty, especially if the invention is a good one.
Owning your idea As IP law overrides specific clauses in contracts, inventors or authors cannot prevent inventions or other creative work being first owned by their employer if it’s created in the course of normal duties.
Employers may in some cases be willing to consider assigning the rights of an invention back to the inventor, but this would have to make business sense to the employer. As an example, an employee may wish to have a clause in their employment contract stating that if they come up with an invention or other creative work in the course of their normal duties, although it is owned by their employer, there is the option for this to be assigned to the employee if it is not of interest to the company. Working under commission or as a freelancer gives
inventors and authors the opportunity to keep inventions and other creative works as their own property. A specific contract is required to transfer ownership of a commissioned work from the inventor or author to the commissioning company.
Protecting your idea As ownership when dealing with employee inventions and other creative works is determined by an understanding of ‘normal duties’, these should be recorded accurately in a document that both parties have agreed to, for example, in an employment contract or job description. Any changes to those normal duties should be recorded in the same way. In general, IP can only be granted to the inventor or
author, or to the party who claims ownership from the inventor. Therefore the chain of title from the inventor through to the applicant for any IP rights needs to be very clear. Despite the position set out by UK law, it is best practice for employers to have employees sign a document specifically assigning their rights in an invention or other creative work to the employer, again so that all parties are clear who owns the invention or creative work.
For more information visit
barkerbrettell.co.uk
May 2016 CHAMBERLINK 47
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