Photo by William Iven on Unsplash
Photo by William Iven on Unsplash

This article explores the thin line between employee and employer claims to the ownership of Patents.

NIGERIAN PATENT LAW VIS-A-VIS OWNERSHIP OF INVENTIONS MADE IN THE COURSE OF EMPLOYMENT

World Intellectual Property Organization (WIPO) Intellectual Property Reading Material, WIPO Publication No. 476(E) at 13 defines patent as a document issued, upon application, by a government office (or a regional office acting for several countries), which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent.

Patent is governed in Nigeria by the Patents and Designs Act, cap P2 LFN 2004 (hereinafter referred to as “the Act”) and the regulations made thereunder. Accordingly, section 6(1) of the Act provides that “A patent confers on the patentee the right to preclude any other person from doing any of the following acts:

  • Where the patent has been granted in respect of a product, the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use; and
  • Where the patent has been granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process, any other acts mentioned in paragraph (a) of this subsection”.

A person upon whom a patent is issued is known as a patentee. Whilst it is straightforward in most cases as to who a patent is issued to, it is however not the case with the invention made in the course of employment. The crucial issue is whether the right of a patent is vested on the employee or the employer with respect to the invention made by an employee in the course of employment.

At common law, an invention made by an employee in the course of employment was regarded as that of the employer. Thus, an employee who is desirous of securing himself the right to a patent in respect of his invention had to ensure that a provision to that effect is made in his contract of employment.

Under the present regime, however, the Act attempts to balance the various interests involved in the process of an invention in determining the person on whom the right to patent vests. Accordingly, section 2 (4)(a) of the Act provides:

“When an invention is made in the course of employment or in the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or, as the case may be, in the person who commissioned the work:

Provided that, where the inventor is an employee, then –

(a) If—

(i)  His contract of employment does not require him to exercise  any inventive activity but he has in making the invention used data or means that his employment has put at his disposal; or
(ii) The invention is of exceptional importance,
He is entitled to fair remuneration taking into account his salary and the importance of the invention”.

As can be gleaned from the above provisions of the Act, where an invention is made in the course of employment or in the execution of a contract for the performance of specified work, the right to a patent in the invention is respectively vested in the employer or the person who commissioned the work.

The phrase “in the course of employment” was interpreted by the court in the case of Patchet v. Sterling [1955] AC 534, to mean the use of the employer’s time and materials. It, therefore, follows that if an invention is made in the spare time of the employee (e.g. while on break or vacation) with his own materials, the right to a patent in such an invention would be vested in the said employee.

Nevertheless, where an invention is made by an employee in the course of employment, section 2(4)(a) of the Act makes provisions for remuneration of the employee by the employer in certain cases.

The first case is where the employee’s contract of employment does not require the employee to exercise any inventive activity but he has in making the invention used data or means that his employment has put at his disposal. The second case is where the invention is of exceptional importance.

This arises where the employee has done something extraordinary. For instance, an employee pharmacist who invents drugs for the cure of ebola virus, cancer or AIDS would be deemed to have made an invention that is of exceptional importance.
In the above two cases, the Act provides that such an employee is entitled to fair remuneration taking into account the employee’s salary and the importance of the invention. The remuneration contemplated here is not modifiable by contract and may be enforced by civil proceedings as provided under section 2(4)(b) of the Act.
On the whole, while patent in respect of an invention made in the course of employment is vested in the employer, the employee should be compensated in deserving cases.

For further information, please contact:

Dr. Ralph Ibekwe

Email: ralph@blackfriars-law.com

Tel: + 234 906 542 2626

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