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