Employee Inventions In The United Kingdom

Committee Serial No. 15. Includes "Federal Employee Invention Rights -- Time to Legislate," by Marcus B. Finnegan and Richard W. Pogue, Michigan Law Review, May 1957 (p. 49-112).

Although employers are required to pay compensation for employee inventions under the laws in many countries, existing legal literature has never critically examined whether such compensation actually gives employee inventors an incentive to invent as the legislature intends. This book addresses the issue through reference to recent, large-scale surveys on the motivation of employee inventors (in Europe, the United States and Japan) and studies in social psychology and econometrics, arguing that the compensation is unlikely to boost the motivation, productivity and creativity of employee inventors, and thereby encourage the creation of inventions. It also discusses the ownership of inventions made by university researchers, giving due consideration to the need to ensure open science and their academic freedom. Challenging popular assumptions, this book provides a solution to a critical issue by arguing that compensation for employee inventions should not be made mandatory regardless of jurisdiction because there is no legitimate reason to require employers to pay it. This means that patent law does not need to give employee inventors an 'incentive to invent' separately from the 'incentive to innovate' which is already given to employers.

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

ÔIntellectual Property in Common Law and Civil Law presents the perspectives of common as well as civil law, on global IP LawÕs most pertinent issues ranging from inventive step all the way to injunctive relief. Edited by Professor Takenaka, director of the University of WashingtonÕs renowned Center for Advanced Studies and Research on IP (CASRIP), the book assembles deep but easy to read essays by some of the worldÕs leading IP scholars. In short, IP LawÕs most important issues from a global perspective; by the worldÕs leading scholars, yet in a nutshell. Excellent!Õ Ð Christoph Ann, Technische UniversitŠt Mÿnchen, Germany Despite increasing worldwide harmonization of intellectual property, driven by US patent reform and numerous EU Directives, the common law and civil law traditions still exert powerful and divergent influences on certain features of national IP systems. Drawing together the views and experiences of scholars and lawyers from the United States, Europe and Asia, this book examines how different characteristics embedded in national IP systems stem from differences in the fundamental legal principles of the two traditions. It questions whether these elements are destined to remain diverged, and tries to identify common ground that might facilitate a form of harmonization. Containing the most current and up-to-date IP issues from a global perspective, this book will be a valuable resource for IP and comparative law academics, law students, policy makers, as well as lawyers and in-house counsels.

A uniquely practical approach to intellectual property law: unfold the problem, reveal the law, apply to life. Using this new and innovative textbook, students are given a problem scenario to unfold; as they do this they will learn to understand the key questions and issues surrounding each area of intellectual property law. As each problem is explored, clear explanations reveal the central legal concepts underpinning the relevant topic. Further illustrations and references to the problem apply the law, enabling students to see for themselves how the law interacts with everyday life and business and giving them a deep and practical understanding. Online Resources A range of additional online resources are provided online, including guidance on how to approach the questions contained in the book, regular updates on legal developments, links to useful websites, and examples of relevant documents.