Q: I am employed by a large drug company in a laboratory. In my own time at home I have invented a significant improvement to a manufacturing process. Who owns the invention?
A: If the invention was made in the course of your employment then under the Patents Act 1977 and the Copyright, Designs and Patents Act 1988 it is highly likely to belong to your employer even though you worked on the invention at home.
If the invention is outside the scope of your normal duties nor duties specially assigned to you by your employer then you may own the rights. Study your employment contract carefully and take legal advice before jumping to any conclusions about ownership.
If you are employed in an unrelated field, particularly if it is not part of your job to make inventions, then the invention may well be yours. Again check your contract of employment. It may restrain you from having any outside business interests and stop your exploitation of the invention in any event.
Even if the invention belongs to your employer then under the Patents Act 1977 you may be entitled to compensation where the employer has obtained outstanding benefit from your invention. This provision has rarely been successfully used, but further details can be obtained from the UK Intellectual Property Office.
Inventors Legal Problems
Related further reading by Susan Singleton...
Editors Note: These articles first appeared as Susan Singleton's very popular column in Inventors World magazine.
Due to the changing nature of the law, Susan has fully updated them for 2015.
For more Inventors' Legal Problems go to:
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Q: I am rather muddled about patents, copyright, trade marks, etc. How can I find out more information?
A: There is widespread confusion about the various rights known collectively as "intellectual property" or "iprs". The IP Office make available a range of free colour booklets on the various rights and also sell a videotape. Further information from the IP Office, tel. 01633 814000.
In short, patents are a registered right lasting up to 20 years which protect industrial inventions. Copyright cannot be registered - it lasts for the life of the author plus 70 years and protects material such as books, plays, music, computer programs, written business papers, specifications and formulae. Copyright arises as soon as the work is produced.
Trade marks are business names which can be protected for ever under the Trade Marks Act 1994 and protect a trading reputation. Unregistered trade marks can be protected under the tort of passing off. Designs can be either registered or unregistered. Registered designs protect the aesthetic appeal of an article, how it appears to the eye.
Unregistered designs protect more mundane designs. Many articles are protected by all four types of iprs. In addition there are specialist rights, such as plant breeders' rights and rights in semi-conductor topographies.
Q: I have had a brilliant idea for an invention. How can protect it and yet try to sell it to companies?
A: First of all be clear what you mean by "sell". You have two alternatives. Either you keep the rights - i.e. ownership of the copyright, patent rights etc. - and grant a licence, or permission to use, to another company for a lump sum/royalties or alternatively you can sell the rights outright for a lump sum. Which route you take will depend on your business acumen and the extent to which you wish to be involved in exploitation. You may make more money by granting limited licences to a variety of companies for different applications of the invention for fixed periods. We all know of the inventors who have sold their rights, for a small lump sum, only to see the company which bought the rights making a fortune.
As to protecting the rights, that depends as to what rights are involved -patents, trade marks and registered designs should be registered as soon as possible and before disclosure to others. No idea or invention should be disclosed to anyone without their signing a binding confidentiality undertaking in advance.
You should keep all original designs and plans safe and dated in case of disputes later. If anyone other than an employee works on the invention ensure that they enter into a written agreement before the work is done making it clear that you own all rights in the work they produce.
Q: I have produced a new invention and am worried about patenting it. What are the risks?
A: Registered patent protection is the best intellectual property protection available. Patents give you a 20-year monopoly right over your invention in exchange for its publication to the world. Patenting is likely to cost several thousand pounds in patent agent and registration fees and you may want protection in several countries. Once registered you have a strong right to exploit and protect.
The difficulties can arise where a big, rich competitor infringes the patent and you cannot afford to sue. There is no doubt that patent infringement actions in the UK are expensive and large companies know this.
Some companies for this reason keep their inventions unregistered as confidential information. Whether to patent or not is best discussed with a qualified patent attorney who should be a member of the Chartered Institute of Patent Attorneys (CIPA).