Definitions of “normal duties” at work confirmed in UK entitlement case
Posted in | Jun 26, 2019
A recent decision by the UK Intellectual Property Enterprise Court (IPEC) highlighted the need to tread carefully when it comes to the entitlement to rights in an invention. The court ruled in favour of the employer, Netsweeper, after consideration of the “normal duties” of the employee and whether the invention was developed as part of these duties.
The invention was a new method for selectively blocking users from accessing websites which was not based on the traditional method of referring to their IP address. This is particularly useful in environments such as schools, where many computers might share the same IP address but different users require different levels of internet access.
The claimant, Mr Kite, worked at Netsweeper from January 2009 until September 2010. He argued that during this employment, he had invented this new method of user filtering in his own time, on his own equipment and as his own project. Since he left the company, Netsweeper had filed an international patent application for the filtering method and Mr Kite sought to claim ownership of the rights to that patent application and those derived from it.
The court considered the relevant sections of the UK Patents Act 1977 in relation to this. In particular whether the invention had arisen during the course of Mr Kite’s “normal duties”. When considering “normal duties” Judge Hacon explained that although an employment contract defines these duties to an extent, over time these duties may change.
An employee’s duties may expand or contract, but to determine whether an invention belongs to an employee, it is necessary, amongst other things, to determine whether it was made in the course of the inventor’s normal duties, or other duties specifically assigned to him.
In the end, the invention was deemed as part of his “normal duties” as he was employed to write software to create “product capabilities for Netsweeper”. Furthermore, his innovation in the invention was directly within the core business of Netsweeper. The fact that the innovation was done at home and on his own equipment was not enough to sway the Judge’s decision that the right to the invention (and hence the patent applications) still belonged to the employer.
This case reminds us that although employment contracts are important when it comes to the intellectual property an individual creates, they are always considered in the courts alongside the day-to-day activities of an employee and the business environment they are in.
A notable, although not decisive feature of the employment contract in question was a document setting out Mr Kite’s roles and responsibilities, which, in addition to a list of specific development activities finished with:
In addition to the above, bring all of your product ideas to the product management function within Netsweeper so that we can build the best products possible.
Not only is this prudent from the point of view of proving entitlement to an invention, but a good invention harvesting culture, where inventions are rapidly assessed and patent applications quickly filed, could avoid cases such as this going to court. In this case, the employer only filed a patent application some time after Mr Kite had left the company and some years after the invention was first discussed – if filed earlier, whilst he was still employed, it seems more likely that Mr Kite would have been named as an inventor from the start and would have more likely signed a declaration to the effect that the invention belonged to the company.
In the event, only the other inventor was named, and although it was agreed that Mr Kite had the right to be named as a co-inventor, he had no right to ownership of the patent applications and hence could not use the invention or extract value from it.
The full judgement can be read here.
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