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Ownership/Employee Invention D - Coggle Diagram
Ownership/Employee Invention D
Who is the inventor? TOC 71, Notes 155
the person who thinks up the inventive concept underlying the patent: Staeng Ltd’s Application [1996] RPC 183 TOC 71, Notes 155
• IDA Ltd v Southampton University – the bright idea was given in a phone call, in response to an invention found in an article. Therefore, the person giving the bright idea was entitled to the patent TOC 71, Notes 155
• Thaler v Comptroller-General of Patents, Designs & Trade Marks [2020]: The machine was not a natural or legal person and therefore could not make the application itself under s.7 and could not be granted a patent. TOC 71, Notes 155
Prior to the Patents Act 1977 there were no statutory rules on the ownership of inventions; dictated by contract TOC 71, Notes 156
This was finally criticized in Electrolux v Hudson [1977] where the court ruled • it was not the employee’s job to invent and the clause in his contract requiring him to hand over all inventions was unenforceable TOC 71, Notes 157
Now, s.39 of the Patents Act 1977 can be summed up with the following: nearly all inventions belongs to the employee S.39(1) TOC 72, Notes 157
The cirmcumstances around this idea is that the invention must be made in the course of the employee’s duties and an invention might reasonably be expected to result from the performance of their duties TOC 72, Notes 157
The test is therefore as a result of the employee's duties, they are expected to invent TOC 72, Notes 158
Outstanding Benefit
Harder to establish, should the employer be capable of pursuing more?
compensation was awarded in Kelly & Chiu v GE Healthcare Ltd [2009] RPC 363 where the claimants were awarded £1 million and £500,000 respectively, TOC 159, Notes 72
outstanding benefit does not have to be proved over a lengthy period of business dealings: Entertainment UK Ltd’s Patent [2002] RPC 291. TOC 72, Notes 159