Following the Ownership and control of IP conference lunch-break solicitor-advocate Bratin Roy (Bristows) emphasised, in "Inventions and Innovations Created by Employees: who owns, who controls?", that the three main concerns raised here are exploitation, compensation and termination. Commercial exploitation depends on having the right to exploit commercially; compensation may be payable where the exploitation is sufficiently profitable, and termination of the employment relationship may trigger competing claims to ownership.
Bratin explained that much depends, under the Patents Act 1977, s.39, on the nature of the duties of the employee and the manner in which those duties are expressed. Thus, for example, a physician's duty is to treat his patients, not to create an invention in order to treat a patient. However, a qualified engineer's duties might create the expectation that he would exercise inventive skills even though his role was managerial. The situation was fluid, not least since a consultant might still be subject to implied duties towards his client that corresponded to the duties owed by the employer to the employee.
- Contractors retain ownership of their IP unless the contrary is established or there's an implied licence;
- Agreements to assign are not the same as assignments: they need to be implemented or they may confer no more than an equitable entitlement;
- Shared-use IP: what happens when a group or business sells just part of itself? Some sort of agreement splitting or sharing IP may be needed. Best practice is to agree everything in advance, bearing in mind any possible insolvency risk;
- Overlapping rights: two or more IP rights can cover the same product. All may need to be addressed;
- Problem agreements: an agreement may be well drafted and explicit, but it addresses a business objective which has changed and needs changing or updating. Amendments will need consideration.