Working From Home and IP Ownership

In our post-Covid world where hybrid working is relatively common, more questions arise as to the ownership of IP in work created “at home”. The relevant work might be an invention, a computer software code, product design or advertising material.

Usually, creators of works protected by the IPRs are the owners of the IPRs. However, for a number of IPRs, if the underlying work is produced by an employee in the course of the normal duties of their employment, the IPR will belong to the employer.

Therefore, there are two questions to answer:

1. Is the Creator of the Work an Employee?
2. Was the Work created in the Course of the Employee’s Normal Duties?

The answer to question 2 will depend on, not only the employee’s contract, but also the actual facts and circumstances of an employee’s duties, especially as normal duties evolve over time, contracting and expanding from the contract’s original wording.

Disputes often arise where the IP is of considerable value or even underpins the employer’s business or that of a start-up formed by a former employee (who asserts ownership of the earlier work).

Factors in favour of employer ownership:

• Work is created in the office or employee’s usual place of work
• Work is created during normal contractual office hours
• Work is relevant to the business
• Company resources are used to create the work
• Work is created by a team of employees
• The employee’s job description requires them to create work of this nature
• The employee was specifically requested to create the work
• The employee has a special obligation to further the employer’s interests (usually senior employees)
• If work arises from activities that fall outside the normal duties, but were specifically assigned to the employee and circumstances were such that an invention might reasonably be expected to result from the carrying out of such duties. This is the case despite an employee being paid very little, having little or no experience / qualifications and low status in the organisation

Today the blurring of work / home distinction makes it harder to tell if an employee is acting in the course of employment or not.

For example, if an employee is using their resources (laptop) and the work is done outside office hours, there is an argument that rights belong to the employee rather than the employer. However, the mere fact that work is done outside office hours does not mean it is not done in the course of employment, as very often there is no clear demarcation.

The important question is whether the work is the kind which an employee was employed to do. This will depend on the wording of the employment contract and the facts of the case. For example, was the employee employed to innovate and, if so, what did those innovation duties cover?

In the context of some technology, the position is relatively straightforward. A researcher will generally be working in a company/university laboratory, using equipment and resources owned by the employer supplied for the specific purpose of the work and possibly working within a team of researchers. In contrast, works of copyright can easily arise at any time of day and outside the usual physical environment of work using a home laptop belonging to the individual.
Even if the employer owns the IP, employees can still retain certain rights, for instance, moral rights attaching to copyright (enabling the author of the work to be named as the author, amongst other things). Employee inventors are also entitled to additional compensation if an invention protected by a patent is “of outstanding benefit” to the employer.

Takeaways

In the era of WFH, it is vitally important that employers regularly review and revise employment contracts, in particular job descriptions, and ask: Do an employee’s duties match up to their job descriptions?

In addition, all employment contracts should have express clauses as to the creation and ownership of IP. They should also include obligations on employees to disclose promptly to the employer any IP arising from the work undertaken and to assist in the assignment of ownership to the employer where the IP does not transfer automatically.

This article is intended for general information only, applies to the law at the time of publication, is not specific to the facts of your case and is not intended to be a replacement for legal advice. It is recommended that specific professional advice is sought before relying on any of the information given. © Jonathan Lea Limited 2023.