At present, if an employee in the UK invents something in the
course of his employment, the employer owns the rights to any
patent that follows.
However, the employee is entitled to an award of compensation –
so long as "the patent is (having regard among other things to the
size and nature of the employer's undertaking) of outstanding
benefit to the employer."
The compensation awarded should represent a fair share of the
benefit to the employer of the patent, but to date, court cases on
the compensation payable have tended to favour the employer.
A change in the law was therefore proposed, as part of a revamp
of the existing Patents Act of 1977. The Government launched a
consultation on the proposals in November 2002 and last week
published the results, together with its proposals.
The bulk of responses to the consultation concerned changes to
the enforcement of patents and to issues arising after the patent
has been granted. But the question of employee-inventor
compensation was one of particular concern: is current law too
biased in favour of employers?
The majority or respondents thought not, fearing a negative
effect on industry and research if changes were made to the
existing system.
The Government is therefore making only one change to current
law in this area: it is redefining the "benefit" to the employer as
including benefits arising "from the patented invention rather than
merely from the patent itself."
"The effect of this," explains its report, "will be that the
onus will still be on the employee to show that the invention (as
defined by the patent) is of outstanding benefit, but it will not
be necessary to show that such benefit arises solely from the
existence of the patent itself".
The Government is pushing forward with other technical changes
discussed in the consultation, including a proposal to allow the
Patent Office to re-examine patents after they have been granted.
This would allow validity issues to be scrutinised before a patent
infringement case is taken to court – thus reducing time and
expense on both sides.
