This is a general guide for businesses to the ‘who owns it?’ problem, but remember that it is a complex area over which many cases have been fought. The best way to make sure who owns what is understood is to have a clear and binding agreement. We will be happy to advise on these issues and prepare any necessary documentation. Contact me for more advice.
- If an employee creates something at work as part of their job, the IP probably belongs to their employer, unless there is a specific agreement to the contrary;
- If an employee creates something at work, but not as part of their job (i.e. something which is not work related or which is done in their own time using their employer’s equipment), this is more complex. Strictly, the IP probably is the employees, although the employer may have a claim against them for using the firm’s equipment, breach of their employment contract (working on their own projects in the firm’s time) or if they have incorporated any of the employer’s IP in their own creation;
- If your business produces something for someone else under contract – for example, you create a computer program for a specific application for a client who pays you for it - here the contract is critical. If you want to reuse the computer code for other projects, make sure the contract specifies that any source remains with you, otherwise it could be held that the right to the program belongs to the client;
- If you create a website or write an article for someone, again, the contract will determine the position. In the absence of an assignment of the copyright, any IP rights you create would normally remain your property. However, any elements provided by the organisation commissioning the work will remain their property.
In the USA, a computer programmer whose contract specified that all intellectual property he originated belonged to his employer (Alcatel), found to his dismay, that the courts backed Alcatel's right to an idea he had and worked on in his own time whilst in their employment.
