An assistant engineer created an invention from a visit to a colliery made in the course of his employment. He applied for and was granted a patent. The employer claimed to be entitled to the benefit of it. The employee resisted saying that he was employed to discharge the duties of a draughtsman or assistant engineer not to apply any inventive skill he might possess for the benefit of his employers.
Held: The employer’s claim succeeded: ‘In many cases the terms of the contract of service may in themselves be sufficient to determine whether or not the Patent belongs to the servant or to his employer. For example, the mere fact that this gentleman was engaged as an assistant engineer or as a draughtsman in the office of the Plaintiff Company would not have entitled the Plaintiff Company to claim for its benefit the advantages of any invention which the Defendant might have made, although the invention had been the result of knowledge and experience gained in their Office, and might even have been suggested by difficulties which had arisen in the Office, the existence of which had come to his knowledge by reason only of his having been employed there. But in dealing with the question whether or not a particular invention is to be retained by the servant or has been made by him for the benefit of the employer, it is necessary to regard not only the contract of service and the relative positions which the servant and the employer occupy hereunder, but the circumstances in which the particular invention was made. I do not think it is right here to limit the consideration to the fact that the ordinary duty of the Defendant would be the ascertaining of the matters to which I have referred, that is to say, to the ordinary scope of the work of an assistant engineer or draughtsman. Still less do I think it material to consider the wage at which he was engaged. I must regard also the particular circumstances and the particular piece of work entrusted to him, out of which this invention grew. Now, the net result is that after his visit of the 9th of November to the colliery he was employed by the Plaintiff Company to design, if he could, a form of lining which could comply with and meet the four specific and essential requirements enumerated in his report. In my opinion, from that moment the terms of his employment imposed upon him an obligation to place at the disposal of, and treat as the property of, the Company the best design which he could, by the exercise of his industry, skill, ingenuity, and inventive ability, produce for the purpose of complying with the essential conditions of the work on which he was employed.’
Judges:
Eve J
Citations:
(1917) 34 RPC 101
Jurisdiction:
England and Wales
Cited by:
Cited – Liffe Administration and Management v Pinkava and Another CA 15-Mar-2007
The employee had patented in the US a trading system he invented whilst employed by the defendant, who now sought ownership. He appealed a finding that the inventions had been made during the normal course of his employment. The employment contract . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 11 April 2022; Ref: scu.250556