Employers should ensure inventions developed by staff are company rather than individual property, a legal expert has warned. Mark Higgins, a partner and head of commercial litigation at Glasgow law firm Golds Solicitors, says the issue is often overlooked, leaving organisations open to claims.
Although cases are unusual, Higgins said the increasing use of technology means they are likely to arise more frequently in future. Cases tend to be contentious because large amounts of money are involved.
According to Higgins, an invention is the intellectual property of the employer if it is developed by the employee in the course of their normal duties, or outside these if assigned to them.
This also applies if the employee has a special obligation towards the employer – for example if they are a senior member of staff with a duty to further the company’s interests.
Unless the situation falls into one of these two categories, the invention is likely to belong to the employee – even if it is developed at work.
Higgins cautioned that the burden of proof is usually on employers to prove ownership. “The problem is a very significant one”, he said, ” If the invention is later determined to belong to the employee then the employer may be prevented from using it.”
One case involved a Greater Glasgow Health Board employee who invented an ophthalmic instrument. A court ruled in 1988 that it had not been developed in the course of normal duties and the invention was the employee’s.