Transcript Ownership of Patent Rights

Ownership of Patent Rights
The Romantic notion of inventorship
 Co-ownership of inventions
 Employee/Employer relationships
 Corporate/Public financing of inventive
activities

The Romantic Era

In the early period of the development of patent
law, inventors were individuals who worked on
ideas without depending a lot on external funding.
Patent law thus construed patent rights on
inventions as purely personal incidents. However,
as some benefactors of the early scientists and
inventors began to realize that enormous fortunes
could be made from the commercialization of
inventions, the legal regime on ownership of
patent rights began to change.
The Romantic Era

Another factor which influenced the development
of the law on ownership of patent rights over
inventions was the emergence of scientific and
research schools where researchers worked
together and often contributed in various ways to
develop inventions. Hence, from being a solitary
process, inventiveness became a gregarious and
externally funded activity. These changes in the
social character of inventiveness influenced the
law on ownership of patented inventions.
Individualistic notion of
inventiveness
Despite the changes in the social character
of inventiveness, patent law still retains the
fiction that an inventor is that person who
performed the creative act of invention.
 Who is an inventor? In Apotex v. Wellcome,
the court reiterated that an inventor must
meet two requirements, namely, s/he must
conceive of a new idea and reduce the
conception into practical shape.
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IDEAS and EMBODIMENT

Sometimes a person may conceive of an
idea but would lack the equipment or
resources to reduce that idea to a practical
reality. If in such circumstances, the person
solicits for help and such financial or
infrastructural help is given but the others
contributed NO CREATIVE intellectual act
of invention, the patent rights will remain
solely with the initiator of the idea.
Joint Inventorship

Further, if the concept or idea is from one person
but other colleagues make “suggestions of
practical value which assist in working out the
main idea and making it operative, or contribute
an independent part of the entire invention which
helps create the whole, s/he is a joint inventor
even though his contribution is of minor
importance.” See Gerald Wire Tying Machines Co.
v. Cary Manufacturing Co., Ltd.
Apotex v. Wellcome

In Apotex v. Wellcome, the Supreme Court
clarified the dictum in Gerald Wire Tying, to the
effect that, “to the extent this suggests that an
individual who contributes to the inventive
concept may be a co-inventor without being the
prime originator, I agree with it. To the extent,
however, that it can be read to include as inventors
those who help with the invention to completion,
but whose ingenuity is directed to
VERIFICATION rather than the original inventive
concept, I respectfully disagree.”
Joint Inventorship

On the other hand, there are cases where
two or more persons contribute ideas and
work together to reduce the idea into a
working invention. In such cases, the
contributors are treated as co-inventors or
joint inventors for purposes of obtaining a
patent on the invention. Patent law permits
the granting of a patent to two or more
persons in respect of one invention.
Joint Inventorship

Under s. 31 (1) of the Patent Act, where an
invention is made “by two or more inventors and
one of them refuses to make application for a
patent or his whereabouts cannot be ascertained,
the other inventors or their legal representatives
may make application, and a patent may be
granted in the name of the inventors who make the
application on satisfying the Commissioner that
the joint inventor has refused to make application
of that his whereabouts cannot be ascertained after
diligent inquiry.” See also subsections 3,4, and 5.
Ownership-Employee

The rules detailed above apply only in relations
devoid of the legal incidents of employeeemployer relationship. The law on ownership of
inventions in cases where there are no compulsory
assignment of patent rights has developed into two
categories. The first is the category where the
inventor is specifically hired to invent. The second
is where the employee is generally inventive but
has no specific invention tasks assigned to
him/her.
Hired to Invent

In cases where the employee is specifically hired
to invent, whatever invention that comes from
such employee belongs to the employer. DevoeHolbein Inc v. Yam (1984) 2 CIPR 229. As long as
the invention was made during the duration and in
furtherance of the contractual engagement,
ownership rights will vest in the employer. The
law suggests that there is an implied contract to
assign employee inventions to the employer but
every case will depend on its facts.
Hired to Invent

The employee is often deemed to be the
trustee of any invention made by him/her in
the course of his/her employment. The
employer may thus act as the legal
representative of the employee. This
implied term of contractual relationships
may, however, be displaced by a contrary
legal agreement. Seanix Technology Inc., v.
Ircha (1998) 78 CPR (3d) 29.
Hired to Invent
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Where, in spite of a contract of employment the
employee develops an invention OUTSIDE of the
work assigned to him/her, and in his/her spare
time, ownership rights on the invention may, in the
absence of an agreement to the contrary, vest in
the employee. The question whether an implied
agreement to assign exists between the employer
and the employee is a question of fact.
Inventive Employee, But NOT
specifically hired to invent

The second category covers those cases where an
employee is hired for a general purpose without
expectations that s/he would invent things but
because s/he is inventive, some inventions are
developed in the course of employment. The law
suggests that where such employee uses the tools
or resources of the employer or makes the
invention in the course of work, there may be a
deemed assignment of the invention and rights
thereto to the employer.
Inventive Employee, But NOT
specifically hired to invent

In cases where there is considerable doubt as to
whether the employee used the resources of the
employer, the courts may come to the equitable
remedy of creating a “shop right” for the
employer. This right authorizes the employer to
make use of the invention and shields him/her
from any action in infringement. The employee
gets the legal title but the employer enjoys some
equitable benefits such as non-infringing use.
Spiroll v. Putti

Plaintiff employed defendant to operate a machine
for manufacturing pre-cast, pre-stressed, hollowcore concrete slabs used for flooring. The
defendant was hired as a mechanic and by
remarkable talent became the mechanical
superintendent in charge of all machines at the
plant operated by the plaintiff. The defendant
greatly improved on the performance of the
machine in issue. He applied for and obtained
patents on the improvements.
Spiroll v. Putti
In deciding whether the patents on the
improved machine belonged to the
employer, the court considered the
following factors:
 Did plaintiff deal with confidential
information?
 Was there evidence of fraud?
 Was plaintiff hired to invent?
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Spiroll v. Putti
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The court concluded that upon case law, the
there is no notion that mere employment,
ipso facto obligates the employer to deliver
up his invention to his/her employer.
Public Servants Invention Act
Inventions made by persons employed by
the federal public service must be disclosed
to the appropriate Minister and the patent
rights thereto belong to Her Majesty in
Right of Canada IF:
 The person made the invention while acting
within the scope of his/her duties,
 Used government facilities.
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Public Servants Invention Act
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The public servant affected by the law in
issue may be given an award. See s. 10.
Inventions of War Munitions
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S. 20 of the Patent Act prescribes that any
public officer or employee, acting within
the scope of his/her duties who invents
munitions of war, MUST, if required by the
Minister of Defence, assign the same to the
Minister of Defence. Compensation would
however be paid.
Crown Immunity and Patents
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The Patent Act is binding on the Crown.
Therefore, save in cases of national
emergency, or extreme urgency, a patentee
and the Crown are expected to negotiate the
commercial use of patented inventions.
Patents on Atomic Energy
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Given the need to regulate the (mis)use of atomic
energy, where in the opinion of the Commissioner
for Patents, any patent application relates to the
production, application or use of atomic energy,
such application shall before it is laid open for
public inspection, be communicated to the Atomic
Energy Control Board. The Minister of Defence
may relieve the inventor of such invention, subject
to the payment of compensation.
Summary

Ownership of patents is therefore governed
by regulations extending beyond the Patent
Act. The regime incorporates prescriptions
from contract, equity, common law, and
extra-patent legislation. The facts of each
case will invariably determine the
applicable legal rules.