Court Pours (Stored) Water on Employer's Claim to Ownership of Employee Designs

Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735 (15 July 2010)

This is a case relating to a registered design, rather than a patent. However, Patentology claims interest on this occasion because it addresses an issue in common with patent rights, namely the circumstances in which an employer will (or, in this case, will not) have a claim to ownership of employee inventions.

The take-home message from this case, as in similar cases in the past, is that an employer is not entitled to assume ownership of the products of their employees’ efforts, including patentable inventions and registrable designs, unless they have actually been produced pursuant to the employees’ paid duties.

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Tags: Australia, Employee inventions, Entitlement, Ownership

The Importance of Establishing Early Ownership of Inventions

It is common for employers to assume that they own their employees' inventions, either due to express provisions in employment contracts or by operation of relevant statutes and/or common law.

It is also often assumed that, in any event, an assignment may be obtained from an inventor at any time after the invention has been made.  It appears to be particularly common in the US that the first time a written assignment document is executed by the inventors, whether employees or not, is after the filing of a nonprovisional application at the USPTO.

A relatively recent case from the UK highlights the potential danger of delaying formal assignment of inventors' rights until later in the patent process, while a recent Australian case serves as a further reminder that there is no guarantee, in all circumstances, that an employer will gain entitlement to an employee invention simply because it was made during a period of employment.

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Tags: Australia, Employee inventions, Patent law, Priority claim, UK