By Boluwatife Sanya
Can the company lay claim to my invention?
I woke up last Friday morning to three different messages from a set of Nigerian employees working in the same company. I later got to know that my previous write-up on copyright ownership in employment relationship found its way to their staff whatsapp group and lighted up some issues.
The message that summarises the situation is pasted below:
“Your write-up on copyright ownership stirred up a dispute in my company. I read your article on copyright ownership in employment relationship. My job description covers brainstorming on making new inventions. Myself and few other colleagues have made two notable inventions during the pendency of our employment. We read your article, checked our employment contract and realised there was no clause addressing ownership of copyright or even intellectual property generally. Does this mean we own the inventions? Can the company lay claim to my invention?”
We scheduled a consultation session but I find it pertinent to share snippets of what the position of the law is regarding ownership of inventions in employment relationship. Put more succintly, ownership of patents in employment relationships.
From the message pasted above, I observed that the client did not understand the difference between copyright and patent. More specifically, he could not differentiate which type of work/subject matter can be protected by copyright and which can be protected by patent.
It is important to first know the differences between these two types of intellectual property because the law that apply to each differ. The Copyright Act, 1988 (note that there is a Copyright bill which has been passed by the National Assembly and we await the President’s assent to make it an Act) and the Patents and Designs Act, 1971.
Simply, copyright protects the literary, artistic, broadcasts, cinematography and sound recordings.Whereas, patent protects inventions. An invention could be a product or a process.
I will explain what the requirements of patentability is. As for copyright, I explained it in my previous write-up. You may read-up on that.
It is pertinent for you to understand the concept of patent. A patent right is more like a social contract wherein an inventor approaches the government to protect his invention so that another person will not commercially exploit it, the government grants the inventor protection for a specific period of time (often twenty years) while the inventor in exchange for that, discloses the step by step procedure of arriving at his invention so much so that anyone skilled in the industry of such invention can independently recreate the invention with the disclosure as a guide.
What is patentable?
A product or process that is new, an inventive step and industrially applicable is patentable. A product is new or novel if it has never been in existence. It is an inventive step if it is not obvious to a person who is ordinarily skilled in the field that the invention is made. It is industrially applicable if it can be used in an industry.
What is not patentable?
Discoveries, scientific theories, mathematical methods, aesthetic creations, inventions which commercial exploitation will be against public morality, computer program (if the inventive step requirement is missing).
Apparently, the job description of the clients who sent messages to me was to make inventions. What then is the position of law on ownership of an invention made during the pendency of an employment?
The General Rule
The person who owns a patent is the one who first files a patent application in Nigeria or who has filed such application in another country (foreign priority). This person is usually referred to as the statutory inventor. See section 2 (4) of the Patents and Designs Act, 1971.
What if the inventor arrived at the invention in the cause of his employment?
The patent belongs to the employer. See section 2 (4) of the Patents and Designs Act, 1971.
What if the employee’s term of reference/job description does not include the making of an invention but still proceeds to arrive at an invention during employment?
If he used the data or materials which is at his disposal as a result of being an employee in the company or if the invention is of exceptional importance, the company will still own the invention but the employee (inventor) is entitled to fair remuneration bearing in mind the importance of the invention.
The fair remuneration stated above is mandatory and parties cannot vitiate it even by agreement of parties (through a contract of employment). See section 2 (4) of the Patents and Designs Act, 1971. Fair re
What if it is an independent contractor arrangement?
An independent contractor is one who is self employed. In this instance, the person who commissioned the independent contractor owns the patent. See section 2 (4) of the Patents and Designs Act, 1971.
After analysing the above during consultation session, I proceeded to advice the clients that their employer has a right to the patent of their invention and they only have the right to be named on the patent application as the inventor. I concluded by stating that if their job description does not require that they arrive at inventions, then they may demand for fair remuneration from their employer.
For the umpteenth time, as an employer, if your employment contract/letter does not address intellectual property ownership, please review it immediately.
Boluwatife Sanya
LL.B, B.L, Copyright (Harvard), ACIArb (U.K), MIP (WIPO, ARIPO, A.U)
Boluwatife is the Managing Partner of Paddle Solicitors. Paddle Solicitors is a full-service litigation, commercial and dispute resolution law office.