Do you own your invention?

Posted: 6th June 2019

LaptopIf employees come up with brilliant ideas, do they have intellectual property rights in them or are they the sole property of their employers?

The High Court considered that burning issue in the context of a computer software dispute.

A company applied for international, national and regional patents in respect of a novel and potentially very valuable piece of web-filtering software which could be used for, amongst other things, preventing children from viewing unsuitable websites and blocking unauthorised access to subscription-only sites.

Via his corporate vehicle, a man who formerly worked for the company as a senior systems engineer challenged its ownership of the patent applications on the basis that the software was entirely the fruit of his own inventiveness. He said that he had developed the core ideas on which the software relied at home, in his own time, and on his own computer.

In rejecting his arguments, however, the Court found that, although he had devised one of the primary inventive concepts that led to the software’s development, a colleague had made improvements and he was therefore not its sole inventor. His work on the software in any event fell squarely within the normal course of his duties as an employee, within the meaning of Section 39 of the Patents Act 1977.

The Court noted that he had been specifically employed to create innovative product capabilities for the company, in the knowledge that it was seeking to develop web-filtering software. He was bound to present all his ideas to the company’s product management team and the work he carried out on the software was precisely the kind of task he was paid to perform. He posted his ideas on the company’s intranet, which he knew was for use solely in connection with its business. The company’s ownership of the patent applications was confirmed.