Who is the owner of a patent
Written by Michael Coyle on 14 September 2009« Return to Reading Room
The owner of an invention
It is the owner of an invention who will usually be the only person able to file a patent. The correct term is prosecute. The owner of the invention allows you to correspond and discuss with the examiner ironing out problems prior to grant. The inventor is usually the owner of an invention. Please see section 7 of the Patents Act 1977.
What about employees?
As an employee while your name may be listed as the inventor the owner will usually be the employer. As in many instances of IPR ownership in the UK an invention belongs to the employer if:
The invention was made in the course of the normal duties of the employee or the invention was specifically assigned to the employee even though it fell outside of his normal duties.
Ownership of inventions made by employees is dealt with by section 39(1) of the Patents Act 1977 (Patents Act), which provides:
Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, 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; or
(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking.
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