As an inventor of a new device or invention you may be entitled to file a patent for that invention. But as a freelance contractor, it usually involves looking at the contract to work out who owns the intellectual property rights in the work you carry out, to see whether you or your client are entitled.
But what if you create an invention in collaboration with other people? Or if you assist in the development of something for which a collaborator then files a patent? What rights do you have to be added to the patent holder (or to replace the patent holder?) This was the issue discussed in Yeda Research & Development Company Ltd v Rhone Poulen Rorer in the Court of Appeal last month .
It has long been held that the first to file a patent effectively “wins” in terms of exclusive rights. Unless you, as a non-patent holder could show that both you invented the invention (or specifically the “inventive concept of the invention”) and that the person who filed was also acting in breach of some other duty (such as duty of confidence) to you when he or she did file the patent, then you could not be joined with the person named as the inventor in the patent. Effectively you have no patent rights.
That position has changed in the recent case, however, in which it was decided that inventors who were not first to file would nevertheless be able to claim ownership of the patent provided they can show they invented the core inventive concept of the patent (merely contributing to an invention but not to the core of that invention won’t count). Provided you, as inventor, can show this, there is no longer any need to show that the person who originally filed the patent was in breach of a duty of confidence or other duty.
So what does this mean for freelance contractors? Some freelancers work on the basis that they are entitled to the intellectual property rights in the work they create, rather than their client. Where this is the case, freelancers would do well to be alert to possible patentable inventions and, where the contractor plays a central role in creating an invention that is patentable – to consider filing a patent for that invention, and not to allow others to claim the patent in your place.
Article authored and supplied by Richard Nicholas.
Richard Nicholas is an IT lawyer with Browne Jacobson LLP (with offices in London, Birmingham and Nottingham)
Jan 9, 2008
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