17 April 2017
Moore Law cooperated with Lisa Blatch, Senior Teaching Fellow in Strategy at the School of Business, Management and Economics, University of Sussex to talk about the business realities of obtaining Intellectual Property Rights (IP or IPRs) in the commercial world. Scott Appleton and Sofia Parunova delivered a presentation on the basics of IP and business implications of each IPR to a class of MBA students at the School. Knowledge was also put into practice by discussing imaginary scenarios Scott and Sofia had prepared to examine with the class. We enjoyed the stimulating discussion which took place – here are some of the key questions and points that are worth noting.
“Copyright triangle”: does a contractor automatically own the copyright in a work they have created? What about an employee? What should an employer do to protect their rights?
This is a crucial issue each business regardless of size should attend to at the start of each new commercial relationship. We referred to “a copyright triangle” in an employment/work situation when presenting, whereby the relationship employer-employee and employer-contractor differs when it comes to ownership of IP. In the case of the latter, a person commissioning (employer) another to produce work does not mean the newly-created IP belongs to the commissioner – it belongs to the creator, i.e. the contractor. The employer must get a written assignment which will guarantee the proper passing of copyright ownership from the contractor to the employer. This is not needed where the IP has been created by an employee because it will automatically belong to the employer (by way of an employment contract, for example). See also our piece on IP myths.
Does an academic or a student at a university own the IP in work they have created?
As we have explained above, the default position for an employee is that any IP generated during the course of that person’s employment belongs to the employer (by way of the employment contract). Academics at a University will normally be employees, but students will not, and in either case the IP position relating to any research (and research findings) that they may be involved with is likely to be more complicated.
Generally, the position is that a student or academic will own the IP in their work (a research project or dissertation) on the basis of the normal rules. However, in practice where the research is being funded by the university (or a third party organisation, or is a joint venture/collaboration), the IP position will be dictated by the requirements of that project and regulated by the policies of the relevant academic institution relating to the research that a student or academic is undertaking.
Such policies vary from institution to institution, but a student may be required to sign an agreement relating to IP beforehand (and probably a confidentiality agreement too) as part of the process. Moreover, if the work has been jointly created by the student and a University employee (i.e. lecturer), the University may ask the student to assign the IP to it in such circumstances.
Can I renew a patent?
A patent cannot be renewed. Once granted, it lasts for 20 years for the benefit of the owner.
Can an employee, whose invention got their employer a patent, claim a share of the profits from the patent?
Section 30 of the Patents Act 1977 states that all inventions made by employees belong to their employers, except for limited circumstances which are fact-specific. It is possible for an employee to be awarded compensation under sections 40 and 41 of the 1977 Act, however the benefit of the patent for the employer must have been tremendous – the threshold for achieving this is extremely high. There is one known case where this happened: Kelly v GE Healthcare Ltd  EWHC 181. In this case, the value of the patents invented by the two employees in question was assessed as £50 million. As a result of the outstanding value this had for the company, one was awarded £1 million and the other £500,000 by way of compensation.
How could the trademark “Apple Corps” (owned by John Lennon and Paul McCartney) co-exist with “Apple” (owned by Apple)? How is that different from the trademark “This Sick Beat” registered both in the US and in the UK?
Trademarks need to be classified in different classes as goods or services, for example one class is for chemicals, another for surgical apparatus, a third for financial affairs. They are territorial rights and a registration of one in the USA for example does not mean it is protected in another country as well. “Apple Corps” could co-exist with “Apple” without infringing for some time because they operated in different classes – one in music, the other in electronics. Taylor Swift registered “This Sick Beat” in the States but the fact that someone else registered in the UK does not mean either is infringing – because they are in different countries.
How would a court enforce an NDA against me if I have breached it?
Controlling use of confidential information by way of an NDA can be a more effective weapon against ex-employees who are seeking to gain an unfair competitive advantage. Courts are keen to stop such actions that benefit wrong-doers unfairly, and are ready to provide quick injunctive relief to stop them from using the secret any further. They will put their current employer on notice that they have a secret and hold the person in breach of the NDA responsible for whatever damages they have caused to their previous employer.
How do I know I am a data controller for the purposes of the Data Protection At 1998?
The Data Protection Act 1998 defines “data controller” as a “person who (either alone or jointly or in common with other persons) determines the purposes for which and the manner in which any personal data are, or are to be, processed”. If you process personal data (“process” has a wide meaning – see here) which relates to an individual who can be identified by it, you are probably a data controller (check here).
What should I do if an individual asks what personal data I hold about them?
Individuals whose personal data is being used have a right to access of personal data from you under section 7 of the 1998 Act. As a data controller, you are obliged to provide them with it for £10 unless there is a collateral purpose for which they are requesting access. This is sometimes disliked by the courts, and the data controller might be exempt from complying with this provision.
Why isn’t co-ownership of an IPR recommended? What shall I do instead?
Co-ownership means that you will have to get the consent of the other co-owner(s) for every commercial dealing you might want to do with the IPR. This can be burdensome if there are many or if you fall out. This could jeopardise the commercialisation of your IP in the long run. You can apply for an IPR as the sole “maker” or get an assignment from the other co-owners to ensure you own all IP exclusively.
The information presented is not legal advice, is not to be acted on as such, may not be current and is subject to change without notice. Internet subscribers and online readers should not act upon this information without seeking professional counsel.
We would like to thank Lisa and her students for this opportunity at the University of Sussex.
Please get in touch with Sofia Parunova or Scott Appleton if you would like Moore Law to deliver a presentation on certain aspects of IP and/or commercial issues.