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I am an academic at a UK university and have been asked to do some consultancy work for a company who wants to own all the IP for that work. I would only do this work on the weekends. Would my university have some claim over this IP? My university's written rules only say that the ownership of all inventions will be determined by Section 39 of the Patents Act 1977. This, on the face of it, seems to suggest they wouldn't have any rights over the IP.

I am reluctant to ask my university until I am clear what the right answer is as their initial reaction to all enquiries is just to say no.

Section 39 Patents Act 1977

(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if—

(a) it was 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; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking.

(2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.

(3) Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done—

(a) by or on behalf of the employee or any person claiming under him for the purposes of pursuing an application for a patent, or

(b) by any person for the purpose of performing or working the invention,

shall be taken to infringe any copyright or design right to which, as between him and his employer, his employer is entitled in any model or document relating to the invention.

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    It is usually hard to prove that something was truly done during the weekends or weekdays, the solution for this problem that I have seen in the south of Europe is simply forbid (in the contract) engaging in other contracts/jobs, so that they hire (rent) you in an exclusive way. AFAIK. You are free to choose open licenses on your work, though, like GPL or CC-SA-BY. Thus, the best way to retain the IP on your work is giving it to everybody (which includes you). (Again, AFAIK, in a different context). – Trylks Oct 14 '14 at 13:38
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    @Trylks Our university contracts allow us to do a certain number of days consulting a year. – felix Oct 14 '14 at 13:40
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    @Trylks The legislation linked to and quoted in the question is UK legislation. In the UK, it's pretty common for academics to engage as consultants to industry. Indeed, interaction with industry is strongly encouraged from the highest level: it's one of the criteria on which academic departments are judged to determine how much funding they get. – David Richerby Oct 14 '14 at 15:31
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    "It's easier to ask forgiveness than to get permission" is often a very useful saying in life...except when it relates to things like ownership of intellectual property, copyright, patents, etc. If work is done that isn't worth much, people aren't likely to care. If work is done that turns out to be really valuable, you are much more likely to suddenly find yourself in a stupidly unpleasant position where your work is horribly penalized! Better to sort things out, in writing, when everyone is on good terms (and the prospect of "easy money" is on no one's mind). – BrianH Oct 14 '14 at 21:26
  • I'd say that, if your employer owns output you do on your own time, then something is broken with IP law... only that IP law is indeed broken in many ways, possibly in this one too. But if the result about doing research on your own time is favorable (as in, they don't own it), pay attention that you don't do it with their resources. So, if you are using a laptop your employer issued for private purposes at home, don't use it for your second job, get another computer if you have to. It can spare you some ugly disentangling. – rumtscho Oct 15 '14 at 14:08
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While it is right that it would be helpful for you to pay, what ought to be a modest sum, to an intellectual property lawyer to check that what you are doing is OK (and hence rely on their indemnity insurance) for reasons that will become clear, hopefully I can say something useful here.

Patent law is UK wide, even though the UK is divided into distinct jurisdictions for most purposes. Other aspects of law are different, eg Scots and English contract law differ on a number of points. I suspect that the differences between the various systems aren't relevant to your problem, but when seeking a lawyer it makes sense to talk to someone from your part of the UK (for these purposes: Scotland, England and Wales, and Northern Ireland, are the 3 relevant jurisdictions).

Some UK IP law, for example copyright law, makes the employer the first owner of the IP if it is created by an employee in the course of their employment. The 1977 Act differs from this by creating two possible situations: (1)(a) and (1)(b) above.

39(1)(a) asks three questions: - is what you are doing a part of your "duties" under your employment contract? - are they either your "normal duties" or duties "specifically assigned" to you? - would an invention reasonably be expected to result from carrying out those duties?

These questions mean what they say. Could what you are planning to do in the weekend be fairly said to fall within your duties as an employee? If yes, you need to think very carefully about the other two questions, if no, then they will not fall within s39(1)(a). To answer that first question is something that will depend on what your duties are (for which we would have to examine your written contract of employment or statement of terms of employment and also what you actually do) and also what it is you are proposing to do.

And that is exactly something that you should be talking to a lawyer about, rather than asking here, because it may require a delicate and careful examination of the facts.

s39(1)(b) applies to people with a special obligation to further their employer's interests. In commercial companies this would be likely to include members of the board of directors. For a university it would depend very much on the nature of the post (see above).

Universities in the UK can have very strange contractual arrangements. I worked for a university at one time which permitted me to do paid contract work during my "working hours" (which were not enforced). That may have been unusual but should demonstrate why nothing should be assumed and why it is sensible to talk to a lawyer about it.

Hopefully those remarks will help you take advantage of legal advice more efficiently.

  • Thank you for this! I should perhaps have added that my particular job as an academic is completely standard and the same as many thousands of others. That is I lecture, research and do admin. What I would really love to know is how the law interprets the "normal duties" of an academic when it comes to research and innovation. In particular, are inventions made solely out of normal working hours part of your normal duties? – felix Oct 15 '14 at 8:21
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    Greater Glasgow Health Board's Application [1996] RPC 207 (registrar in ophthalmology making an invention for the ophthamlmoscope while studying at home - not in the normal course of duties) is probably the closest case. But there's a fair amount of case law and applying it would require some thought - something a lawyer could offer. – Francis Davey Oct 15 '14 at 13:03
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To broaden Bill Barth's answer a bit: you definitely need to get an lawyer involved. You also should make certain that there is date-stamped written communication ensuring that your university's legal/IP staff are aware as well. This may seem like a pain and may make it harder to get started on anything, but it's much better to get any possible conflicts identified and sorted out now, rather than to find yourself in the middle of a complex and lengthy lawsuit later.

I don't know about the UK, but suspect it to be similarly heterogeneous to the US, where there is an exceedingly large range of differences in the IP rights given in employment agreements at research institutions, both within academia and outside of it. Some places are very liberal and basically claim nothing that's not "in the direct line of your duties." Others claim even your dreams and the photos you take at your kids' birthday party (not exaggerating!). In all cases, however, there is often a wide grey area between de jure and de facto policy, and it's important to get an agreement and understanding written down before you give IP to any second organization.

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    Assumptions that the UK legal system is just like the US system (or, rather, systems) are rarely true, especially concerning the law around employment. – David Richerby Oct 14 '14 at 15:33
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    Assumptions that the various institutions of any country have different de facto standards for how they deal with legal questions in the inevitable grey areas, however, is a statement about human nature that I will defend to the death. :-) – jakebeal Oct 14 '14 at 15:59
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    @jakebeal the rate of variation is very different - in jurisdictions where the general principle is that specific contracts override laws (as in USA) you should expect employment rights to be heterogenous and vary from case to case; and in jurisdictions where generally laws override contracts (as in continental Europe) you should expect employment rights to be very homogenous and to be pretty much equal across the board with variations only in true edge cases. – Peteris Oct 14 '14 at 16:07
  • @Peteris Perhaps I'm being provincial and American, but when I read the excerpt posted in the original question, I see a huge amount of space for dispute: what exactly are "normal duties" or "specifically assigned" or "reasonably expected" or "special obligation"? There are a lot of opportunities for disagreement, especially in a common-law system like England or (most of) America where precedent plays a major part in resolving legal disputes. My recommendation stands: make sure there is written agreement establishing positive freedom to operate before proceeding. – jakebeal Oct 14 '14 at 16:56
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    @jakebeal Those terms are likely more settled than you think, thanks to decades of judicial consideration; however, that doesn't mean that the settled meaning is what you might think it is, which makes legal advice even more important – sapi Oct 14 '14 at 22:07
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You need to spend a few hundred pounds with a UK IP attorney/solicitor getting some advice about the law in your country. If the weekend contract has any value to it at all, it will be worth finding out from someone who knows the law.

  • What is the value added of your answer? You're effectively saying: 'I don't know the answer, ask someone else'. But this is exactly what the OP is doing. – user5657 Oct 15 '14 at 9:04
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    @РСТȢѸФХѾЦЧШЩЪЫЬѢѤЮѦѪѨѬѠѺѮѰѲѴ I think he is also saying, "Don't act on the answers you get from other people on the Internet who may or may not have any legal expertise". – Boluc Papuccuoglu Oct 15 '14 at 11:43
  • @BolucPapuccuoglu in that case, it's quite interesting. On SO we fight answers that are technically the comments, you suggest that that 'answer' is technically a close vote? – user5657 Oct 15 '14 at 12:31
  • It's not a close vote. It's a warning that needs to be prominent, so I think it's more suitable as an answer than a comment. People on the internet can be naive about legal questions, so I try to get in quickly and make this suggestion. Others who have provided advice about the law which tries to directly answer the question may be exposing themselves to sanction in their country for "practicing law without a license" or other crimes. I try to short-circuit that when I can. – Bill Barth Oct 15 '14 at 15:20
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More important than the laws surrounding general IP in your country is the contract you signed with your employer.

The contract must detail exactly what work is to belong to the company. The contract probably specifies a body of work and a timeframe. For example,

The company shall own all works by the employee related to Tree Bullfrogs created from April 1, 2000 to April 1, 2001.

Alternatively,

The company shall own all rights to all works produced during normal business hours.

Most of time the contract will be designed by professionals to supercede general IP laws your country has. However, no contract can give a company to all things you create on your own time, unless specifically agreed upon.

In conclusion, read your contract. Depending on the stakes involved it could make sense to hire a lawyer, but he will also be more concerned with the contract.

  • My contract is very short and makes no reference to IP. This appears to be standard in UK universities to have short almost contentless contracts. Most of the terms of employment that apply to everyone are on their website. The only relevant part I could find is the part I quoted in the question. That is that ownership of inventions will be covered by Section 39 of the Patents Act 1977. – Lembik Oct 14 '14 at 16:55
  • Hmmm it looks like you will need a lawyer – Code Whisperer Oct 14 '14 at 17:09
  • Not everyone has an employment contract. It may be the norm in the UK, but it's not in the US. – Bill Barth Oct 14 '14 at 17:48
  • @BillBarth Not having a written employment contract at all is, as far as I know, a uniquely US thing. We have no such concept as being hired "at will" in the UK. – Lembik Oct 14 '14 at 18:19
  • @BillBarth Perhaps that is true for US jobs in general, but for pretty much any research-oriented job, there will be some sort of form that you have to sign regarding IP policy as part of accepting employment. Typically, it involves agreeing to abide by the organization's standard IP practices, with space to note exceptions regarding "pre-existing conditions" of various sorts. It's easy to overlook in the HR form blizzard but very important. – jakebeal Oct 14 '14 at 18:33

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