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June 2, 2017

Protecting Intellectual Property Rights

The ownership of intellectual property can be an important consideration for any business. It will be particularly important however for businesses in IT, for example developing software or source code, and for businesses which are developing new products, manufacturing processes or are in particularly innovative sectors.

The term ‘intellectual property rights’ describes a range of legal rights that can attach to certain information, ideas and creations such as inventions, names and images. They generally fall into two categories. Unregistered rights for which protection arises automatically, this includes copyright, unregistered design rights and rights in unregistered trade marks. There are also registered rights which include patents, trademarks and registered designs. An application must be made to an official body to protect these rights, for example the Intellectual Property Office in the UK.  The owners of such rights are entitled to prevent their unauthorised use and can also exploit them to generate an income.

Where it is likely that intellectual property rights may be produced in the course of an employee’s normal duties, it is important to clearly set out in the employment contract who will own any resulting intellectual property rights. The key points here are that the employee must be under a contract of employment and the intellectual property must have been developed in the course of their normal duties, or falling outside their normal duties but duties which have been specifically assigned to the employee. Therefore as well as having clearly drafted intellectual property clauses it is important to carefully consider the scope of the employee’s duties in the job description.  In the absence of any agreement UK legislation will set out who the owner is, and it will generally be the employer.

For example in relation to patents the Patents Act 1977 provides that the owner will be employer. The front page of the patent will contain details of the inventor which is often the employee and the employer, in this case, would then be stated as the owner.

Finally it is important to consider that in the context of copyright, certain “moral” rights arise in favour of the creator, even if the commissioner of the work owns the copyright. These rights protect the ownership of the work and includes the right to be recognised as the author of the work, and the right to object to any editing of the work. The Copyright, Designs and Patents Act doesn’t deal with moral rights therefore it is important for any business where copyright may arise that this is dealt with clearly in the contract of employment.

If you would like advice on protecting your intellectual property in any commercial contracts please contact the Commercial and IP team by emailing commercial@greenawayscott.com, for advice on employment contracts please contact employment@greenawayscott.com or visit our website at www.greenawayscott.com.

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