Employee-made intellectual property: Statutory considerations for the contractual regulation of ownership
Authors Lee-Ann Tong
Affiliations: Senior Lecturer, Department of Commercial Law, University of Cape Town
Source: Industrial Law Journal, Volume 36 Issue 2, 2015, p. 870 – 887
Intellectual property rights are valuable for the competitive advantage they secure for intellectual property owners. The intellectual property system generally recognises authors and inventors as the first owners of copyright, designs, and patents. The bulk of valuable intellectual property is made by employee-authors and inventors who are employed for the purpose of creating the intellectual property or who do so using their employers’ resources. Employers therefore have an interest in owning employee-made intellectual property. Although copyright, patents and registered designs are all intellectual property rights, they are regulated by separate statutes and the approach to the allocation of first ownership of employee-made intellectual property differs accordingly. The result is that there is no consistency in the first ownership of copyright works, patented inventions and registered designs made by employees. Because copyright, patents and registered designs may be transferred, employers could consider using the contact of employment to regulate ownership for employee-made intellectual property where they prefer to deviate from the statutory first ownership rule. However, the usefulness of contract in this situation is limited by statutory restrictions in the intellectual property legislation on the freedom to contract.