Sunday, 11 March 2012

Innnovation by Employees

Last Saturday I attended a CIPIL seminar on Employees and Intellectual Property Rights. As a full day event there was far too much interesting material to summarize in a blog post. However I came away pondering whether the UK was missing an opportunity in motivating creativity within the workplace by its provisions on the relative position of employee and employer in relation to patentable inventions. The seminar included presentations on the situation elsewhere by the effervescent Professors Catherine Fisk (US), the erudite Niklas Bruun (Nordic) and the charming Matthias Leistner (Germany) as well as an insightful presentation bu Iain Purvis about almost the one and only UK employee compensation case Kelly v GE
It seems surprising that we do not have harmony in the ownership of works for hire. Employers do pretty well but the way it works is a patchwork.
Unhappy employee-inventor

An employer would probably like access to any invention made by his staff that is relevant to the business. In the Nordic countries, Germany and the US this is the case. In the US its a "shop right" to use and comes free, but elsewhere there are detailed rules about disclosure and compensation. In the UK ownership is determined by the employee's job description and duties, there is no disclosure obligation and compensation is obtainable (if at all) only after the invention or the patent for it (or the combination of both) can be shown  to have been of outstanding benefit to the employer. This is not an active policy issue so this quaint situation isn't likely to change soon. However it did cause me to ponder whether it impacts on the creativity and happiness of the inventors in the UK's larger businesses. What do you think?
Of course businesses are free to adopt their own policies to encourage and reward innovation and many have done so with the assistance of their IP strategy advisers. Its possible though, that without obligatory guidelines on remuneration as in Germany, board members may find it difficult to authorise modest payments to inventors at an early stage. The current mood of the country against the bonus culture, certainly assists here.
Is there any mileage for solo practitioners in the UK in assisting inventors seek compensation. We have the Patents County Court that should reduce the costs and although the claim will have to be limited to £500K that's not a bad lump sum. The economic evidence is still going to be the main challenge. Still if you were a named inventor in a patent your company has kept alive for its full 20 years it may be worth thinking about it.

1 comment:

Anonymous said...

While the law in the UK may provide for inventor compensation, I am of the opinion that, in general, if an employee is paid to invent then there should be no extra legislative burden on the employer to provide additional compensation. I am speaking as a former research scientist, now attorney, and I also attended the conference.

The legislation errs in that it places great emphasis on the legally determined inventor. The inventive concept that provides for patentability and such inventorship will in many cases not be an important factor in the creation of 'the invention' or product applying such invention. The contribution from the 'inventor' may even be minimal.

It must be remembered that inventorship is determined solely by the wording of the claims and their comparison to the publicly available prior art. There is no consideration of the confidential information available to the inventor from within the company and its employees. Without access to such information, the inventor may never have devised their invention, and when compared with such information, any contribution may have been prima facie obvious.

The legal cases, such as Kelly, do take into account the contribution made by others in bringing an invention to the market, but I'm not sure they take into account this subtle issue regarding determination of patentability.

There are many other interesting aspects of employee compensation as provided by the speakers from other European countries. One thing I would add, is that the UK legal system in no way provides for an effective means for employees to pursue their compensation claims under the Act (1 public case!) because of the huge imbalance of the parties with the risks and costs involved. If there is to be an intention to provide for employee compensation (which there currently is), then there must be suitable means for such claims to be dealt with. I can understand why UK businesses would be very happy with the current legislative provisions because they are rarely likely to be used and, as such, must be considered a waste of paper and ink, not to mention time and effort on behalf of practioners in reading and discussing the relevant articles. The Black Book could do with a bit of thinning out!