Working from home – does it affect patent ownership for employee inventions?

Does working from home affect the law around patent ownership for employee-devised inventions? What should employees be aware of to guarantee confidentiality when working away from the office? Here’s a short guide from our expert Terence Broderick.

What does the law say?

The law around the ownership of inventions devised by employees has been well-established for a long time. It’s set out in section 39 of the UK Patents Act, which states:

“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.”

So, inventions devised by employees in the course of their normal or specifically assigned duties are owned by their employer — provided that an invention can reasonably be expected to result from the carrying out of those duties.

What if I am working from home?

Section 39 of the UK Patents Act contains no explicit limitation on location. This would indicate that location doesn’t matter. Therefore, even if you’re working from home, any invention that you devise in the course of your employment is likely to be owned by your employer.

However, in Prosyscor Ltd v Netsweeper Inc & Ors [2019] EWHC 1302 (IPEC), the court noted that the time and place of devising an invention may be relevant — but this is a secondary matter to be considered when there is doubt as to the duties expected of an employee. In Prosyscor v Netsweeper, the devising of the inventive concept fell squarely within the employee’s named duties. Therefore, the fact that the work was carried out in the employee’s home and using their own equipment made no difference — the employer was still entitled to the invention.

What if you have employees working from home?

If your employees are working at home and may be devising inventions as a result of their duties, it’s important to educate them on both invention ownership and their duties towards confidentiality. They should be equipped appropriately to ensure that information around new inventions can be kept confidential.

Specifically, you should:

• Ensure that your IT infrastructure can support those employees, so that confidential information regarding inventions devised outside of the office can be kept secure.
• Refresh employees’ knowledge of their obligations to confidentiality, including making them aware that even inadvertent publication of sensitive information may prejudice a future patent application.

If you have questions about employees working from home on commercially sensitive projects or require refresher training about the obligations surrounding inventions and confidentiality, get in touch with us.