Q: I own a shop selling and repairing bicycles and bicycle equipment. I have recently discovered that one of my employees has developed and filed a patent application for an improved bicycle helmet. Should he have consulted me first and am I entitled to any part of the invention as his employer?
A: The issue of invention ownership between an employer and employee, can usually be determined by considering whether the invention (in this case an improved bicycle helmet) was made in the course of the employee's normal duties. Therefore, if the employee's usual job at the bicycle shop involved improving or modifying bicycle accessories, such as helmets, then you may be entitled to the invention and the employee should therefore have discussed the invention with you. However, if the employee was only usually concerned with tasks such as bicycle repairs or sales of bicycles or equipment, then the development of an improved bicycle helmet arguably may not be made during the course of his normal duties. In such a case the employee may own the invention rather than the employer.
Other issues that could affect invention ownership include whether you specifically assigned the employee to carry out any work which could be expected to result in the development of an invention, or if the invention was made during the employee's duties where there is a special obligation to further the employer's interests. To determine whether you have a case for entitlement, I would advise you to consult a patent attorney, providing details of the employee's usual duties and any other additional tasks that may have been assigned to him.
If it is determined that you may be entitled to the invention then it is possible to refer a question of entitlement to the Comptroller at the UK Intellectual Property Office and to possibly obtain rights in the patent application.
First published in the Financial Times