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Not that its a massive deal (for me) but found out my employment contract has an IP clause in it. If I come up with *any* IP that is patentable, whether related to my employer or not, or done outside of work is owned by my employer.
Amazed this is true, bit of googling suggest this might actually be true, gobsmacked this has passed any form of reasonableness test.
Lets say I invent a new whizzy bottom bracket and patent it. My employer (who has nothing to do with bikes or engineering) owns the patent
Can't say I'm planning on submitting any patents but still.... wonder how it would work if you worked for loads of companies as some sort of consultant...
Trying to find some case law to see if anyone has tried to claim for patents that are not related to the employers line of business.
That's been the case with every employment contract I ever had. I'm not aware of how well it stands up in court.
Pretty standard in contracts.
At the start of my career I worked for a design agency and were tasked by a Spanish company to redesign/cost-reduce their clunky car jack design. I came up with one with some innovative features that were patented with my name on the patent. I remember the client not being 100% happy, particularly as they needed to invest in some machine tools as well as wanting the IPR assigned to them, which we declined. This jack is now standard fit across VAG and other makes - so millions produced in 30+ years. If only I’d agreed to a 0.5p design commission on each one!
Same here - IP owned by employer.
The thing about patents is that they are expensive to do, and even more expensive to defend in court if you think someone has infringed on your patent.
I nearly got one at a previous employer. It was good enough to get through the internal checks and went to formal application, but there was one line in one existing patent that meant that we didn't go further.
"In the future it may be possible to do this on a single device"
I still got £500 from the company for getting that far. Would have got more if granted, and even more annually if it was used in a company product.
Employer: It's boiler plate. We need to protect our IP as much as possible and make sure employees focus on their jobs.
Standard employee: Whatever
Most people smart enough to design or patent something of value: Hey can you please remove this clause, I like to build bike bits in my spare time that are nothing to do with what you sell.
Any decent employer taking on relatively senior / technical people will deal with this very often, most are reasonable. Those that are not have to pay more to counter it or compromise on quality of hire.
In that example you were directly employed and paid to solve the problem by the company so I can see why they own the IP. Interestingly there is a clause about where your invention caused significant benefit for the company you should get a share of the additional profit. Might be worth looking into that!
My surprise is that my contract is ANY patent which I think is unreasonable.
Lucky I haven't put a patent in for new BB standard just yet...
I think it's very hard to enforce if it's outside your main line of work (even if you do it in work time using your work computer!) I vaguely recal some case law involving an accountant who created accountancy software during his employment. He ended up owning it as he was employed to do accountancy not software development.
Standard clause but then a fair amount of wording in contracts is there as a deterrent and not because it is intended to actually enact what it purports to do.
Depending on where you work there might be an IP Policy that elaborates on the position and you might find that there are exceptions and limitations to the blanket statement in the contract, or varying levels of remuneration (of some sort of another) to staff, depending on circumstance.
Also, it is a lot easier to say "any invention" than (e.g.) "novel Inventions relating to bicycle component design" which leaves room for people to develop IP/components that perhaps relate to the employer industry but deliberately fall just outside the specified field capturing "bicycle component design" in some way. Etc.
IIRC my employer tried to do that and we laughed at them. They then changed to something more reasonable. This was all decades ago tho so I might be wrong.
Standard for almost any contract where IP might be created by the employee. But, if its patented and the patent specifically names you as an inventor, you can (in most circumstances) use it royalty free outside of that company. They can/will try to prevent this, but it's been successfully defencded numerous times. My company actually pays me a royalty if a patent is used and pays me to file the investion discoluse and help write a patent. Might be worth seeing of yours does the same. Whenever I'm light on work or can't concetrate, I try to patent, y'know, for the monies. 🙂
I understand that the inventor of the jubilee clip kept it quiet until he left his employer for this very reason https://www.hemmings.com/stories/article/l-robinson-co
This is standard contract waffle.
I manage IP at a fair sized organisation. If you worked for us (not cycling company) and invented the bicycle spanglifier 2000, then quit and launched your own business to sell it, none of us would even consider making a claim on your IP.
OTOH if you invented something lying in bed that is in our line of business we’d blinking well ave it.
I'm a UK and European patent attorney.
The UK Patents Act 1977 contains provisions relating to this - see section 39. An important point to note is the 'nothwithstanding anything in any rule of law' preface, which means that e.g. a term in an employment contract which further diminishes an employee's right beyond that defined in the UK Patents Act is not enforceable. In other words, employers cannot just grab all IP made by their employees irrespective of the job role etc.
What about job relevant IP? I've worked for a US company which patented a fair amount of stuff that it's employees came up with .. and I think would have been pretty aggressive about following up if you walked out the door with that patent, or tried to register it on your own.
There were a few guys there who earnt more on their patents than they did on their 100K + day jobs
A colleague of mine developed something as part of his job that was patented. The company put his name on the patent but required him (as per contract) to assign it to them, so they paid him £1 to make the transfer valid. He never cashed the cheque (it was framed on the wall at home) and he often speculated whether not having taken the money meant he still owned the patent.
@wbo - for job relevant IP, it usually belongs to the employer by default by virtue of the UK Patents Act, assuming you're in a paid-to-invent kind of role (e.g. R&D, engineering) or in a senior position. Of course, the employer might have more generous IP ownership provisions in their employment contracts, but that's unlikely.
@Greybeard - to put you out if your misery, assuming he was employed in the UK, then the agreement he signed (and got £1 for) was merely confirmatory. The title to the invention already transferred to his employer by virtue of employment, assuming he was in a paid-to-invent kind of role.
A colleague of mine developed something as part of his job that was patented. The company put his name on the patent but required him (as per contract) to assign it to them, so they paid him £1 to make the transfer valid. He never cashed the cheque (it was framed on the wall at home) and he often speculated whether not having taken the money meant he still owned the patent.
I have 7 or 8 patents IIRC, all owned by my employer at the time (4 different companies in total). I don't recall signing anything to 'hand them over', they were drafted and submitted by a Patent lawyer on behalf of the employer at the time.
I did see the £1 thing, an ex-employer wanted me to sign something to do with a patent which had been filed whilst I worked for them, but as I didn't work for them anymore I just didn't respond. Their problem, not mine.
So there’s two patent attorneys on here! Who’d have thought. Saved me looking up the section of the act, thanks. Agree - that contract will be unenforceable inasmuch as it goes beyond the patents act provisions xcpootler mentioned, so if an invention had nothing to do with you’re job or a duty specifically assigned to you, and you’re not in such a senior position that you owe a special duty to the employer, it’s not going to be theirs.
I have to say, after around twenty years as a regular on this site, it still never fails to astound me about the breadth of knowledge that it contains! It’s incredible, and really rather wonderful. Two patent attorneys - you wait years for one, and two turn up! 😁
*waves at Oblongbob*
This all explains the conversation I had with IP lawyer when submitting patent application. I submitted it as my company but as that is basically me it is reasonably straightforward so I wasn’t quite sure what all the other employment questions were for.
after around twenty years as a regular on this site, it still never fails to astound me about the breadth of knowledge that it contains
The point at which I stopped being surprised was the thread with the hot air balloon pilots. Of course we have balloon pilots, it'd be more weird if we didn't.