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 provided: ‘All trade secrets, inventions, written documents, and other confidential information developed or created by or with your assistance during your employment in the course of carrying out your duties are LIFFE’s property and such rights or interest in any such property or information that you may have are prescribed by the law.’
Held: The employee’s appeal failed. The job description included the development of credits derivatives products, and the work had become part of his normal duties. For section 39(1)(a) to apply not only must the invention be made in the course of the employee’s normal or specifically assigned duties but also that ‘the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties.’ Since the relevant part of the 1977 Act extended an employee’s rights it was not necessary further to interpret it to preserve common law rights.
Jacob LJ said: ‘Since one cannot go by the contract alone I do not think one can be too precise about how the duty is to be ascertained. The contract and the general nature of the job both call for examination. It is not possible to be too analytical about this. In the end one is asking whether the employee is employed to try to innovate and, if he is, what general sort of areas his innovation duties cover.’
Judges:
Chancellor, Longmore LJ, Jacob LJ
Citations:
[2007] EWCA Civ 217, [2007] Bus LR 1369, [2007] 4 All ER 981, [2007] BusLR 1369, [2007] ICR 1489
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Appeal from – Liffe Administration and Management v Pinkava and Another PatC 24-Mar-2006
The claimant sought the rights to a patent acquired by the defendant in respect of trading systems invented by him, saying that this had been created as part of his work for them. The employment contract included a clause assigning such rights to . .
Cited – British Reinforced Concrete Engineering Company Ltd v Lind ChD 1917
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 . .
Cited – Greater Glasgow Health Board’s Application 1996
An Opthalmic Registrar employed by the Board invented an optical spacing device for use with an indirect ophthalmoscope. The Hearing Officer decided that the invention belonged to the employer.
Held: The employee’s appeal succeeded. The court . .
Approved – 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 . .
Cited – Patchett v Stirling Engineering Co Ltd 1955
The court considered the position at common law of an employee claiming to patent his invention: ‘It is elementary that, where the employee in the course of his employment (ie in his employer’s time and with his materials) makes an invention which . .
Cited – Re Charles Selz’s Application 1953
The applicant was general manager of a factory of a lamp-shade maker. At a packaging exhibition he visited for his employer, he was shown some ‘spray plastic’ packaging. It occurred to him that spray plastic was capable of uses other than packaging, . .
Cited – Armstrong Whitworth Rolls Ltd v Mustard 1971
An employee’s duties and roll may evolve over time. . .
Cited – Carmichael and Lesse v National Power Plc CA 29-Jan-1997
Casual workers employed under ‘nil hours’ relationship still had a contract of employment and the appropriate and associated rights. A court was fully able to determine the terms of the contract. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Employment
Updated: 03 November 2022; Ref: scu.250476