IP Information & News

Inventions made after hours — who owns the patent?

Dr Terence Broderick

By Dr Terence Broderick

Patent Attorney

The modern working day is a fluid affair. Advances in technology have made it easier to work from home and many of us work ‘after hours’ when individual projects demand it. This raises a crucial question when it comes to inventorship — is an invention still owned by an employer when it’s devised by an employee outside of their normal working hours?

The default legal position

The ownership of employee-devised inventions is set out in section 39(1) of the UK Patents Act wherein it states:

“Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employee, be taken to belong to his employer for the purposes of this Act and all other purposes if (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties;….”

The default legal position is that an invention is owned by the employer where an employee has devised it within their normal duties or duties which have been specifically assigned to them and invention can be reasonably expected from those duties.

However, the legal position grows more complicated when it comes to working from home.

Working from home

This issue was recently discussed in Prosyscor Limited v Netsweeper et al [2019] EWHC 1302 (IPEC). Prosyscor Limited (Prosyscor) was set up by an ex-employee of Netsweeper to develop software which provides a means to discriminate between computers that share a single IP address when blocking access to a website. Netsweeper disputed the entitlement of Prosyscor to patent applications which were derived from the development of the software.

The key disputed issue in this case was the scope of the duties of the ex-employee. The court held that creating software that allowed filtering access to websites in the manner set out in the respective patent applications fell within the normal duties of the ex-employee. That is to say, the court held that invention might be reasonably expected to result from carrying out the duties of the ex-employee.

Prosyscor submitted that the work was done by the ex-employee during his own time, in the evenings, on his own computer. That is to say, Prosyscor submitted that the invention wasn’t devised during the ex-employee’s normal duties because it was devised while working at home in the employee’s own time.

The court was quite dismissive of this submission, setting out that as the invention was part of the acts the individual was paid to carry out for the company, the fact they were done at home makes no difference and the invention was owned by Netsweeper. That is to say, normal duties don’t end at the office door.

Normal duties don’t stop when you leave the office

Many will say that this is a common sense view — it certainly reflects the modern world in which so many of us are working at home as part of our normal working day. A more legally-founded view is that employees have a fiduciary duty to act in the interests of their employer at all times — even when at home.

The important part of this case was the definition of the ‘normal duties’ of the employee. The conclusion was that normal duties don’t stop when an employee leaves the office, particularly if what they do outside the office is similar to what they do in the office.

This case has other implications for employers and employees if inventions owned by the employer are being devised off-premises.

Advice for employers

Given the outcome of the decision identified above, if you're an employer that regularly has employees working outside of hours, you should:

  • Ensure that your IT infrastructure can support those employees, so that confidential information regarding inventions devised outside of the office can be kept secure.
  • Make employees aware of their confidentiality obligations to the company.
  • Encourage employees to use the company’s email server rather than generic email servers, as it’s likely to be more secure.

Advice for employees

In view of what has been set out above, you need to consider the following:

  • Remember that projects you’re working on are still confidential even when working at home — they could result in patentable subject-matter which could be prejudiced by an accidental disclosure.
  • Don’t use generic email servers such as Gmail and Hotmail for correspondence related to projects for your employer.
  • Mark documents that you generate as confidential — this will at least act as a deterrent if somebody sees them.
  • Protect all documents using passwords or another form of encryption.

If you need detailed advice around the ownership of inventions, particularly those developed by an employee, feel free to get in touch with me at tsb@udl.co.uk.

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