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Harris’ Patent: 1985

Harris was the manager of the Wey valve department of his employer. In August 1978 he was told he would be made redundant, and left in December. In the meantime he devised an improvement to the Wey valve and applied for a patent in January 1979. The employer claimed to be entitled to the invention and instituted the requisite proceedings. The Hearing Officer decided that the invention belonged to Harris.
Held: The employer’s appeal failed. The court did not decide the question of whether section 39 is declaratory of the pre-existing common law, but said that sections 39(1) and (2) and 42(1) and (2) showed that Parliament intended that rights to an employee’s invention ‘are to be governed by, and only by, the provisions of s.39’. He did not rule out considering the pre-existing case law for guidance but ‘it is the provisions of section 39 to which regard must be had for the law governing any employee’s invention made after the appointed day’.
The court asked what were his normal duties at the material time, and whether the invention in suit was made by him in carrying out those duties. As to the first issue the employee’s duty of fidelity to his employer did not assist in the formulation of the actual duties which the employee is employed to carry out. As to the second requirement ‘that is to say, whether the circumstances were such that an invention might reasonably be expected to result from his carrying out those duties, Miss Vitoria submitted that the circumstances referred to in paragraph (a) must be the circumstances in which the invention was made; and it seems to me that submission must be right. Mr. Pumfrey, in the course of his argument, pointed out that the wording of the paragraph was ‘an invention might reasonably be expected to result’ and not ‘the invention might’ and so on. But plainly, the wording ‘an invention’ cannot mean any invention whatsoever; it is governed by the qualification that it has to be an invention that ‘might reasonably be expected to result from the carrying out of his duties’ by the employee. That wording applies equally to the second alternative in paragraph (a), that of ‘specifically assigned’ duties falling outside the employee’s normal duties; and, therefore, in my judgment the wording ‘an invention might reasonably be expected to result from the carrying out of his duties’ must be referring to an invention which achieves, or contributes to achieving, whatever was the aim or object to which the employee’s efforts in carrying out his duties were directed, in the case of alternative (i) of paragraph (a) his normal duties being performed at the time; in the case of alternative (ii) of paragraph (a) the specifically assigned duties, that is to say, such an invention as that made, though not necessarily the precise invention actually made and in question. The circumstances to be taken into account for the purposes of paragraph (a) of section 39(1) will, of course, depend on the particular case, but clearly a circumstance which must always loom large will be the nature of the employee’s duties, either his normal duties or the specifically assigned duties, as the case may be. The nature of Mr. Harris’s normal duties have to be examined, therefore, from this aspect also.’

Judges:

Falconer J

Citations:

[1985] RPC 19

Statutes:

Patents Act 1977 39(1)(a)

Cited by:

ApprovedLiffe 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, Employment

Updated: 01 May 2022; Ref: scu.250559

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