Statutory Employee Invention Claims across US and European Jurisdictions
Statutory employee IP claims in Europe create non-waivable compensation liabilities that override US choice-of-law contracts and require localized addenda.
Section 39 Patents Act
Meaning
Legislative clauses in the United Kingdom define the primary conditions under which an employer owns an invention made by an employee. Section 39 patents act establishes two specific scenarios where ownership transfers automatically to the company. It acts as the starting point for any analysis of intellectual property rights in a British employment relationship.
Invention Ownership
The first scenario covers inventions made during the course of the employee’s regular work where an invention might reasonably be expected to result. This section 39 patents act provision typically applies to engineers and scientists and designers and technicians whose job description involves solving technical problems. The company owns the rights because the creation of the technology is part of the work the employee was paid to perform.
Special Obligation
Senior employees often have a special responsibility to further the interests of the employer’s undertaking. This part of the section 39 patents act usually covers senior executives or directors who hold a fiduciary duty to the firm. Because of their high status and influence, any discovery they make that relates to the business belongs to the company regardless of their specific research role.
This duty extends to protecting the assets and the goodwill and the secrets and the future opportunities of the enterprise.
Ownership Default
Any invention that does not meet these criteria remains the property of the employee. The section 39 patents act prevents companies from claiming rights to discoveries made by workers in unrelated fields or during their personal time without using company resources. This clear division of property rights protects both the investment of the business and the personal creativity of the staff.