It is widely understood that an invention (and the resulting patent) created by an employee during the course of his or her normal employment duties belongs to the employer.

It is perhaps less well understood what constitutes “normal employment duties” and that even in the event that ownership does vest with the employer; the employee may be entitled to compensation if the patent, when exploited, provides an “outstanding benefit” to the employer.

The test to ascertain ownership is whether the creation of the invention was:

a)      in the course of the employees duties; and

b)      a reasonably expected consequence of someone carrying out those duties.

The obvious starting place is the employees’ job description and employment contract but these alone are not definitive as it is generally accepted that an employees duties may change in both their nature and scope over time. Ownership should not therefore be automatically assumed one way or the other.

Even in the event that ownership is proved to vest in the employer, UK law recognises that it would be unfair for employers to gain excessively from an employees work without an obligation to compensate. Consequently, if a patent confers “outstanding benefit” to the employer, the employee is entitled to “just and fair” reward.

Recent case law has shed some light on what factors will be considered in an assessment of these terms and it is clear that the required “benefit” and what is considered “fair” will be relative to the parties involved and the circumstances.

If you have any questions relating to intellectual property ownership, exploitation or infringement, please contact DTM’s IP Team.