Flashcards in Ownership and entitlement Deck (18)
What is required for ownership of an invention to pass from an employee to a company?
An invention belongs to an employer if:
The invention was made in the course of normal or specially assigned duties
an invention could reasonably be expected to arise from these duties
the invention was made in the course of the employees duties and implicit in these duties was a special obligation to further the interests of the company
NO PATENT REQUIRED!
If owned by the employee what further rights does the employee gain?
they can apply for the patent
the inention can be worked and without infringing other design right or copyright that belongs to the employer
NO PATENT REQUIRED
What is section 39 of the act
S39 deals with employee inventions and the transfer to a company
What section deals with employee inventions?
What section deals with compensation for employees
what is S40 of the act
compensation of employees
What is the deadline for an employee to apply for compensation
one year after the patent ceases to have effect
What are the requirements for an employee to receive compensation if they are an inventor and the invention passed to the company under S39?
The employee made the invention
belonging to the employer FOR WHICH A PATENT HAS BEEN GRANTED
is of outstanding benefit to the employer
by reason of those facts it is just that the employee should be awarded compensation
What are the requirements for an employee to receive compensation if they are are inventor and own a patent that is subsequently been assigned to or an exclusive right or license granted to the employer?
the employee made an invention
that he owned and was subsequently transfered to the employer
The compensation recieved by the employee was inadequate
and it is just that he should be awarded compensation
What can cancel an employees right to compensation?
If the employee is a member of a trade union which has negotiated a pay settlement regarding inventions
what is patent form 49
Caveat - request to be informed of a future event with respect to a patent
useful for an employee to know when a patent has lapsed
If a patent has lapsed more than a year ago can an employee still claim compensation under S40?
perhaps the period for claiming compensation is extendable under R108(1)
What does S41 deal with
The amount of compensation due to an employee if successful proceedings are brought under S40
how is the amount of compensation due to an employee calculated under S41
The employee is entitled to a fair share of the benefit to the employer from the invention, the patent or application or the assignment
taking into account:
The employees duties and existing pay
the effort and skill in inventing
any co-contributors contribution
the employers contribution
Payments can be periodic or a lump sum.
Seems to be approx 3-5% depending on contribution
Only benefit during the time the patent is in force post grant pre lapse
Enforcability of employee contracts.
This prevents any employment contract term from over ruling the powers of S40-41
However S40-41 do not overrule any secrecy requirements by contract or act
definitions for employee inventions
Who does S39-42 apply to?
employees must be mainly employed in the UK
if not clear where they are employed the company must have a uk place of busness