The proprietary interest in an invention is regulated by the Patent and Designs Act Cap p2 LFN 2004. What happens, therefore, where such invention was created in the course of employment?
As a general rule, the provision of Section 6(1) of the Patent and Designs Act provides that “A patent confers on the patentee the right to preclude any other person from doing the following…”
The summary of the following would include;
- In the case of products, other persons would be precluded from the sale or use of such product (unless consent/license was first sought and obtained)
- In the case of a process, precluding others from applying that process to the production of a product.
The person to whom the patent is issued is the patentee (and not necessarily the person who created the product or process).
To answer the question we would have to consider the position of the common law. This is where the exception to the general rule comes in. Under the common law, the invention of an employee made in the course of his employment would belong to the employer, unless of course, the employee protects his invention by inserting a protective clause to that effect in his contract of employment.
The Act has however made an attempt to consider the interest of all parties (that is, the employer and employee), in the process of determining to whom the patent right would fall. This attempt at finding a common ground is provided for in section 2(4)(a). The section reads as follows:
“When an invention is made in the course of employment or in the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or, as the case may be, in the person who commissioned the work:
Provided that, where the inventor is an employee, then –
(a) If—
(i) His contract of employment does not require him to exercise any inventive activity but he has in making the invention used data or means that his employment has put at his disposal; or
(ii) The invention is of exceptional importance,
He is entitled to fair remuneration taking into account his salary and the importance of the invention”.
What can be gleaned from this section is that; while the invention of an employee (created in the course of employment) is that of the employer, or the person who commissioned the work, said employee is entitled to a fair remuneration, considering certain factors, as have been seen in the section above. So, where his contract of employment does not require him to make any inventions or where such invention is of exceptional importance, then he would be entitled to fair remuneration, considering also his salary and the importance of the invention.
It should still be pointed out that patents are however still vested in the employer, even under this section. All that the employee is entitled to a fair remuneration.
As will be seen in paragraph (i), this invention would have to be carried out, using the time, resources, and data that the employer put at his (employer’s) disposal.
What then is “in the course of employment?”
In Patchet v. Sterling [1955] AC 534, the court interpreted the phrase to mean invention made during the course of employment time and use of employer’s resources.
It follows therefore, that all inventions made during the employee’s spare time (holidays, leave) and not made with the employer’s resources, do not qualify as made in the course of employment, and patent for said invention would be vested in the employee.
Source
Legal View: Who owns Patent to an invention, Employee or Employer?
