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Inventions made by university employees – entitled or not?

25 May 2016

In the UK, deciding whether or not an invention belongs to an employee or an employer is governed the UK Patents Act 1977. Whilst it can be generally assumed that an invention which is produced during the course of normal duties of the employee belongs to the employer, it is interesting to consider how the law is interpreted in light of the duties of a higher education research employee. Decision BL O/518/15 issued by the UK Intellectual Property Office reports one such case.

The claimant, the University of Warwick, UK, filed a US patent application in 2008 relating to an apparatus and method for inspecting an article using electromagnetic radiation. This application claimed priority from a UK application filed in 2006. The US application named three inventors, all of which were employed at some point by the claimant. Two of the inventors assigned all rights in the invention over to the claimant, whilst the defendant, Dr Geoffrey Graham Diamond, declined to do the same.

The claimant initiated proceedings under section 12 of the Patents Act, which relates to resolving entitlement issues. An order was sought requiring Dr Diamond to assign the rights to the invention over to the university on the basis that the invention was made at a time when Dr Diamond was an employee of the university. Dr Diamond claimed that the invention belonged to a company, G-Tronix, of which he was a named director. The claimant argued that the invention had arisen during the course of Dr Diamond’s normal duties as an employee.

Both parties agreed that Dr Diamond had contributed to the invention and that he had been employed by the University of Warwick as a Research Fellow in the School of Engineering between 2002 and 2003. From 2004 to 2007, Dr Diamond’s appointment was extended depending upon specific project funding. It was agreed that the invention had arisen between 2004 and 2006.

Dr Diamond stated that during his employment, he was a low ranking assistant with a highly prescriptive set of tasks to perform. He also maintained he was under constant supervision of a principle investigator or supervisor. The hearing officer concluded that the defendant’s duties were to undertake research tasks assigned by his supervisor, Professor Hutchins, in which there was a duty to innovate. It was noted that the claimant had a lack of primary evidence to prove that the invention was made in the course of the defendants normal duties.

Dr Diamond argued that he joined G-Tronix in 2006, where he stated that his contributions were made outside of his normal university duties and via prototypes which were made at home in his workshop. It was decided that Dr Diamond had not made his contribution to the invention in the course of his normal duties, especially in light of the funding attributed to those duties, which was not attributed to the invention.

Notably, it was concluded that neither side provided particularly strong evidence. The hearing officer stated that the onus was on the claimant, the University of Warwick, to provide sufficient evidence to back up the claim. The University of Warwick were unable to comply and the action failed, resulting in joint ownership of the patent application by Dr Diamond and the University of Warwick.

In academia, where funding sources can be blurred and highly intelligent employees are encouraged to innovate, entitlement to inventions will remain a highly contentious issue. This demonstrates the importance of good record keeping and ensuring ownership of inventions is properly assessed.

 

Katherine Banks
Life Sciences & Chemistry Group

If you require further information on anything covered in this briefing, please contact Katherine Banks (kbanks@withersrogers.com; +44 1926 310700) or your usual contact at the firm.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, May 2016