Where an enterprise deals with a consultant or subcontractor, a clause should be included in the consulting or subcontracting agreement under which the inventor of patentable inventions consents to the transfer and assignment of a patent for those inventions to the enterprise. The agreement should specify the specificities of these inventions and the identity of the inventors in as much detail as possible. In this context, both laws provide for the transfer of ownership through an assignment, which must be in writing and registered in the Register of the Patent or Design Office, the registration being relevant for the purposes of constructive communication. As such, employment contracts may require the assignment of an invention (the invention that forms the basis of a patent and/or design) to the employer if the invention was made within the scope and scope of an employee`s employment. Funds received by the faculty member and the college or university from the sale of the intellectual property jointly owned by the faculty member and the college or university will be allocated and spent in accordance with the specific agreement set forth herein: [shall be negotiated by the parties.] The AAUP adopted a Statement of Principles on Copyright (approved by the Board in June 1999), but it did not formally address patent issues. The copyright statement assumes that the faculty member (or members) who create the intellectual property is the owner of the intellectual property. [“It was the predominant academic practice to treat the faculty member as the copyright holder of works created independently and on his or her own initiative for traditional academic purposes.” AAUP Copyright Statement.] Although this assumption also applies to the patent sector, in the academic context there is a practice of entering into agreements between higher education and university administrations and the inventors of the faculty, which provide in detail a means of sharing revenues from the commercial application of patented inventions. Most of us have seen the standard catch-all clauses in an employment contract where all forms of intellectual property (IP) are attributed to the employer. These clauses exist in various forms. Most of these forms are quite simple and understandable at first glance.
However, these clauses are sometimes unenforceable and void. Under the Patent Act 57 of 1978, the invention is no longer considered patentable as soon as a patentable invention is disclosed by an employee, for example, to the public (whether orally, in writing or by means of such an invention). If, for example, intellectual property rights are located on an employee`s private resource, such as his own laptop, or if it is proven that they were created outside working hours, it is doubtful whether the employer is entitled to intellectual property rights on their part. Getting it wrong in protecting a company`s intellectual property can be a very costly mistake, both in the long and short term, and while it`s not too difficult to get it right, it requires knowledge of the best ways available to protect its rights. With any type of work, there are subtle differences in the approach to determining questions about who the author or owner will be. In most cases, the general approach would be that the author (as defined in § 1(1)) is the first owner of the copyright that exists in the respective work. However, as referred to in points (b) to (d) of Article 21(1), there are anomalies in the general approach. Article 21(1)(d) is of particular importance for the content of this Article, which provides in essence that all work [which does not fall within the categories of Article 21(1)(b) or (c) which is produced in the context of and in the context of the author`s employment by another person under a service or training contract] is of particular importance for the content of the this article: the copyright of that other person. The Committee monitors and reviews technological and legislative changes that affect IP policy and reports to the competent faculties and administrative authorities if such changes have an impact on existing policies.
The general rule in this regard is that intellectual property rights created by an employee are automatically owned by the employer. However, difficulties may arise in cases where it is disputed that these intellectual property rights were created in the course of the employee`s employment. Another often overlooked aspect arises in a situation where a copyright is transferred to a third party, for example, in the case of a computer program where the software was created by an employee of the company. Although the employer owns the copyright in the computer program, the moral rights of the author (employee) must be taken into account before the transfer to a third party. In certain circumstances, the employee may prevent the third party from falsifying, mutilating or modifying the computer program. The parties to this Agreement believe that the public interest is best served by creating an intellectual environment in which creative efforts and innovation can be encouraged and rewarded, while maintaining adequate access to and use of the intellectual property for which the College or University supported the establishment of the College or University. The position originally set out in el du Pont de Nemours and Company v SA Nylon Spinners (Propriety) Limited 1987 BP 282 (CP) was confirmed in Firm Construction Co Ltd v PG Kusel 1997 BIP 25 (CP), which concluded that the employment contract had been presented by the employer as proof of ownership of the invention and instead of a formal assignment of the invention in the event of a recalcitrant or absent employee. If there is an employer-employee relationship, even if only by oral agreement, a transfer of the patent to the employer is possible, provided that the employee has acted within the scope and scope of his duties, as confirmed in the case of Firm Construction. In such cases, where evidence is required, it may be provided by making an affidavit (if the agreement was an oral agreement). The college or university supports the development, production and dissemination of intellectual property by its faculty members. Regardless of the context, faculties must develop appropriate policy and language. The following language example is taken from a review of existing AAUP policies, contracts, and policy statements.
With respect to our customary (South African) law, the intellectual property (IP) created by an employee in the course and scope of his or her employment automatically passes to the employer. Although specific cases of automatic attribution of intellectual property are already provided for in the relevant laws, it is always advisable to include a clause in the employee`s employment contract, as this mitigates a possible problem that arises at a later stage with regard to the ownership of the respective intellectual property. The signed employment contract can then also be invoked as a written order in the event that a former employee is undisciplined. Various forms of intellectual property are envisaged in South Africa and, due to the breadth of this field, the scope of this article will focus on the most common areas of registered intellectual property, including copyright, patents and registered designs. .
