A Practical Guide to the Ownership of Employee Inventions – From Entitlement to Compensation

Businesses need to understand the value in inventions, but do not always fully appreciate the relationship between their employees, the inventions they create and who owns the result. In this book, oriented to the business executive and written in straightforward language we guide the reader through the detail and procedures relating to employee inventions, explaining under what circumstances a person is a relevant employee so that their inventions become those of their employers. The law is specified in the Patents Act 1977 but there are circumstances where the factual position as to who is an employee, and whether their invention belongs to an employer is not so clear cut. The commentary takes the reader through a series of cases and a course of commentary to explain this area of law.

There has also been recent judicial attention as to the level of compensation which ought to be paid to employees for inventions that benefit their employer. We explain the concept of making a contribution which is of outstanding benefit to the employer, and in what circumstances the employer’s benefits deriving from the invention, the patent for it or both can then require a fair share to be paid to the employee. What was a little known part of patent law has been brought to the fore by this book and is given the prominence and explanation that it deserves.

ABOUT THE AUTHORS

James Tumbridge is a barrister and an Intellectual Property Litigation partner at Venner Shipley, a European Intellectual Property firm. James has been a litigator for 20 years, and has extensive experience in commercial litigation, intellectual property and alternative dispute resolution. He has a uniquely international experience having worked and appeared in courts in the USA, Canada, the UK and British Overseas territories. He is the author of ‘Tumbridge’s Guide to Legal Qualification: The Common Law World’, and a co-author of ‘Drafting Patents for Litigation and Licensing’; and co-author of ‘Privilege and Professional Confidences: An International Review’.

Ashley Roughton is a practicing barrister and has been in practice in technology based areas of law, principally Intellectual Property law and competition for over 25 years. He is also a teaching member of the department of Law at Queen Mary, University of London. Ashley is a co-author of the competition annex of the CIPA guide and also writes a number of chapters for both ‘The Modern Law of Trade Marks’ and ‘The Modern Law of Patents’ (of which he is chief editor).

CONTENTS

Chapter 1 – Introduction
Chapter 2 – General Summary
Chapter 3 – The Relationship Between Employer and Employee and the Notion of a Worker
Chapter 4 – Employee Inventions Arising Under the Patents Act 1977 and the European Patents Convention
Chapter 5 – Employee Inventions Arising in Equity
Chapter 6 – Employee Inventions and Assignments
Chapter 7 – Entitlement
Chapter 8 – The Employee as the Proprietor and the Duty to Account
Chapter 9 – The Employer as the Proprietor and the Obligation to Compensate