Do you actually own the Intellectual Property you are using?
16th July, 2015
Emma Lowe, Senior Dispute Resolution Solicitor
I’ve said it before and I’ll say it again, a company’s intellectual property is often its most valuable asset – protecting it is paramount. However, you can only protect what you own or have a legal right to use. So, unless you are using a third party’s intellectual property under licence a company should ensure it owns all the IP it is using.
Who owns what?
Copyright – The general rule is that the creator of artistic, literary, dramatic, musical works, films, broadcasts or sound recordings owns the copyright in them. However, this is not the case where the copyright work (other than sound recordings or broadcasts where the author is also the producer) was created by an employee in the course of their employment. Thus, provided a person is employed under a “contract of service” that is indicative of a strict employee employer relationship, rather than that of a consultant and employer AND the work they create falls within the ordinary scope of the person’s role, then the employer will own the copyright in the work. Otherwise the creator of the work, such as a consultant or contractor, regardless of whether they have been commissioned to do the work, will be the first owner of the copyright.
Designs – As with copyright works, provided an employee creates a UK unregistered design or a UK registerable design under a contract of service and the work carried out falls within the normal ambit of their employment, their employer will own the intellectual property in the designs. The position in relation to the ownership of designs that have been commissioned, and thus designed by a consultant or contractor, will depend entirely on when the designs were created. The position in relation to designs created after 1 October 2014 is similar to that for commissioned copyright works. In other words, the IP in the designs belong to the designer. However, for designs created prior to 1 October 2014 the position is somewhat surprising in that the commissioner of the designs is the first owner of the IP in the designs, not the designer.
Trade Marks – There are no specific rules relating expressly to the first ownership of trade marks. Albeit that The owner of a registered trade mark, as set out in the relevant trade marks registry, is taken to be the registered proprietor. If a consultant or employee applied to register or obtained a trade mark in their own name that in fact belonged to a company, the company would have the opportunity to apply to the registrar to oppose the application or have the registered mark invalidated and transferred into their own name.
Patents – When applying for a patent the applicant must set out who the owner and inventor of the product or process is. Hence it is understood that they may not necessarily be one of the same. In fact, an inventor’s rights are secondary to those of the owner so it is important to differentiate the two. An invention belongs to an employer only if the employee is working under a contract of employment and, it was either:
• Made in the course of the employee’s normal or specifically assigned duties and in either case an invention might be reasonably expected to result; or
• Made in the course of the employee’s duties and the employee has, because of the nature of the duties and the particular responsibilities arising from them, a special obligation to further the employers interests.
If the invention is created under any other circumstances the invention belongs to the inventor. Ensure you are the registered proprietor and/or have the rights you need.
It’s quite simple – in order to protect and exploit your intellectual property, first, make sure you own it or at the very least have a legal right to use it.
There are four simple rules to remember:
1. Ensure consultants and/or contractors you use will/do transfer any intellectual property they create to you;
2. Ensure that contracts of employment are drafted in such a way to ensure detailed scopes of employment/job descriptions are included (particularly important where inventions are being created);
3. Ensure any employment contracts explicitly assign ownership of any intellectual property created by your employees to you;
4. Where a consultant and/or contractor does not own the intellectual property they are utilising ensure the rights owner grants you a licence to use the rights.
If you would like any guidance or assistance in owning, protecting and exploiting your intellectual property, or want to review your employment contracts to make sure they provide for IP retention, please contact Emma Lowe at Genus Law on 0113 320 4540.