On Friday 23 December 2022, the UK Patents Court handed down an early Christmas present: a 651 paragraph judgment on the topic of IP ownership. The bulk of the analysis in Oxford University Innovation Ltd v Oxford Nanoimaging Ltd [2022] EWHC 3200 (Pat) dealt with consumer law issues (as to which, see a brief summary in our first article). But the case also engaged some interesting questions on the meaning of "course of normal duties" which is relevant to the statutory presumption around employer ownership of employee generated inventions.

The rise in home working makes it increasingly difficult to distinguish between work and home hours. In this new world, ownership of IP in employee-created works and inventions risks becoming something of a minefield, but this new case provides some helpful pointers.

Meaning of employee's duties under s. 39(1)(a) of the UK Patents Act 1977

The University of Oxford argued that it owned the IP in inventions created by a student named Mr Jing during a paid internship pursuant to  section 39(1)(a) of the Patents Act, which provides that employers own the rights to inventions "made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties."

The judge helpfully summarised existing case law on the interpretation of section 39(1)(a) of the UK Patents Act 1977[1], noting that an employee's contract is the primary source of their duties, but is by no means the only source. The conduct of the employer and employee over time can cause duties to evolve, contract and expand. In establishing an employee's duties "one is asking whether an employee is employed to innovate and if so what general sort of area those innovation duties cover". With regards to the "reasonable expectation" requirement, the judge clarified this as meaning it was foreseeable "'an invention' in general terms might result from the work."

The judge agreed with the University that Mr Jing was in fact employed to innovate, since he was specifically asked to drive forward the development of a type of microscope that didn’t then exist, and because his previous experience of designing microscopes was a key factor in the University's hiring decision. Of the claimant's various counterarguments, the judge dismissed the following three as irrelevant to the "reasonable expectation" test under s. 39(1)(a):

• Mr Jing's low status in the hierarchy of the University;
• Mr Jing's youth and (relative) lack of qualifications and experience; and
• The fact that Mr Jing was on a casual contract, since he was clearly still an employee of the University.

The judge also suggested that the “very modest” salary paid to Mr Jing did not automatically interfere with the University's expectation that he would create an invention. His low salary might have been a relevant factor were there any ambiguity as to whether he was doing the kind of work that might result in an invention. But it was clear he was doing such work. It was therefore clear that inventions created by Mr Jing during his internship belonged to the University under s.39(1)(a) of the Patents Act.

Comparison with Section 11 of the Copyright Designs and Patents Act 1988 (CPDA)

During his internship, Mr Jing created some software code to control the functions of his microscope invention. The judge did not discuss the ownership of the copyright in such code as it was not relevant to the claimant's case. But it is worth noting that the CPDA contains provisions around ownership analogous to s. 39(1)(a) of the Patents Act. Section 11(2) of the CPDA states that "where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary."

In a post-covid environment, where more and more of us are working from home, it is now harder to tell whether an employee is acting in "the course of employment" at any given time. It is arguably a finer distinction to make in relation to copyright than patents. Research scientists may be tied to particular laboratories, so practically speaking may spend less time working from home. Such researchers will make heavy use of equipment and resources owned by their employer, supplied for the specific purpose of their work, allowing less scope for deviation from their original project.

By contrast, authors of literary, dramatic, musical and artistic works may not be tied to any given location and may less likely to be dependent on resources supplied by their employer. For example, it is easy to imagine a copyrighter writing other content while working from home.  Interestingly, the judge commented during his analysis of university IP policies that "copyrights and related rights are more likely to remain with academics"; and he also suggested it might be unfair for a university "to make a claim simply because facilities (such as a library) had been used". He made these remarks in relation to students, not employees, but his analysis may be of some relevance to employees also.

Takeaways 

Statutory presumptions around employer ownership of employee generated inventions and works are an important mechanic for employers. As can be seen above, the tests are slightly different.

With hybrid working here to stay in 2023, it is a good time for employers to check their IP policies and employment contracts. For example, asserting ownership over copyright works created at home, even if not made during typical work hours, is likely to be far easier where such creations are clearly related to the employee's duties. This case, therefore, shows the importance of keeping the employment contract, job description and role up to date to ensure they can be relied upon to demonstrate the scope of their work and to rely on upon the statutory presumptions of employer ownership. 

[1] See LIFFE v Pinkava [2007] EWCA Civ 217; [2007] R.P.C. 30