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Tuesday, 27 November 2012

Collective agreements relating to employee inventions: can you help?

The Hunter ...
Not everyone in the world can boast that they are the Hunter Simpson Professor of Tech Law, not even Seattle philanthropist W. Hunter Simpson himself since, sadly, he died in 2006. However, his memory is perpetuated by the work of the professor who bears his name -- the IPKat's friend Toshiko Takenaka of CASRIP, an integral part of the Technology & Art Group, University of Washington School of Law.  Toshiko, who is currently researching into employee invention laws, notes that the UK's Patents Act 1977, section 40, provides that an employee is entitled to receive compensation from his employer in the case of an invention made in the course of employment, or which falls outside the scope of his employment duties but is assigned or exclusively licensed to the employer, where the invention turns out to have been a particularly valuable one. However, under section 40(3), this does not apply
" ...  to the invention of an employee where a relevant collective agreement provides for the payment of compensation in respect of inventions of the same description as that invention to employees of the same description as that employee. ..."
By section 40(6) of the same Act
"“relevant collective agreement” means a collective agreement within the meaning of the Trade Union and Labour Relations (Consolidation) Act 1992, made by or on behalf of a trade union to which the employee belongs, and by the employer or an employers' association to which the employer belongs which is in force at the time of the making of the invention".
Only in it for
the d'oh ...?
Toshiko is desperately keen to see some collective agreements that provide for the payment of compensation by employers to employee inventors.  IPKat team blogger Jeremy has never, in all his many years, seen one -- and he would not be at all surprised if no such collective agreements were ever concluded, given the antipathy or suspicion which many trade unions had in the previous century towards such schemes. In the view of many contemporary trades unionists of that time, the rewarding of the inventor alone, for the success of an invention which in many cases was as much the result of the efforts and collaboration of non-inventive employees too, was not only an inequitable division of the fruits of invention but could have a divisive effect within the workplace.

If any readers have ever come across a collective agreement of the kind mentioned here, can they please let us all know?

People with whom W. Hunter Simpson should not be confused:

11 comments:

MaxDrei said...

I imagine the good professor has drunk his fill of such Agreements in Germany. Was it not their age-old Employee Inventor statute that inspired the provisions of the 1978 UK Act? And, what's more, they still have active Trades Unions.

The notion that there is something incompatible between union membership and rewards for making patentable inventions seems not to trouble the unions in Germany. But then, in Germany, also by statute, a representative of the union sits on the Supervisory Board that oversees the Board of Directors.

Just as there are no such Supervisory Boards in England, I doubt there are any such Collective Agreements either.

Maria said...

In Sweden there is a collective agreement that regulates the remuneration employers have to pay the employee inventors. This agreement has been around for a long time to facilitate the interpretaion of the not very precise law from 1949 pertaining to this issue. Unfortunately I could not find a copy of this agreement in english easily, but one should be retreivable from the Swedish Association of Graduate Engineers, http://www.sverigesingenjorer.se/About-us/.

Good luck!
/Mimmi

Patrick Farrant said...

Jeremy, greetings from one of your QMC students from a good few years back. Here is a link to the BBSRC's collective agreement. I am not sure this is the latest one. I am happy to discuss further:

http://www.bbsrc.ac.uk/organisation/policies/employment/code/pay/a7-14.aspx

Anonymous said...

Brunel University has a contractual collective agreement

Roufousse T. Fairfly said...

Jeremy,

It's not clear to me whether your distinguished correspondent's request concerns only collective agreements in the UK or in the subject at large.

I'll throw in my two pennies worth anyway.

There isn't a whole lot of literature concerning employee-inventor rewarding. I personally don't know of any book in the English language. (This could just be a sign of my ignorance)

In French there is a book by Jean-Paul Martin, "Droit des inventions de salariés, 3ème édition, Litec, 2005. Its intended audience is the patent practitioner, which is provided with concrete guidance on how and where to file. The regimes in FR, DE, GB, US and JP are discussed and compared.

At page 201 it is stated: Nicola Dagg indicates that very few British collective agreements include clauses relative to invention ([un?]like in France), and that in the nearly 30 years elapsed since 1977 there has been no known decision issued by the Patent Office or a court which granted any supplementary remuneration to a salaried inventor for an "outstanding benefit" reaped thanks to a patent protecting his invention. [My translation].

No bibliographic source is provided for that comment. A reference is made on page 200 to a paper by David Gibbins, "Compensation for UK employee inventors", Patent World 165, Sept. 2004. According to that paper, the UK case law is considered to be unfavourable to employee inventors, even when the dispositions of the new law of 2004 are taken into account, and that there are essentially no incentives in place. According to Martin, this would explain the poor showing of GB in patent statistics. (At the end of the short chapter I read that Mrs. Thatcher once was a patent examiner. Is this true?)

The appendices include some excerpts of collective contracts French industry, and guidelines for compensation.

The following title might also be of interest:

Couture, Dubé, Malissard: Propriété intellectuelle et université - entre la libre circulation des idées et la privatisation des savoirs, Presses de l'Université du Québec, 2010

The book discusses IP issues in general in the academic context (copyright, patents, plagiarism, signature, etc.). Chapter 10 (available online!!!) includes excerpts of regulations in force on several Canadian campuses applicable to students and faculty.

Roufousse T. Fairfly said...

Correction: I wiped my glasses clean and the reference for the passage cited jumped in my face.

Nicola Dagg, ABC Newsletter, Intellectual Property, June 2004

(I have no clue as to where this publication can be found)

Roufousse T. Fairfly said...

Max,

You wrote: Was it not [the] age-old [German] Employee Inventor statute that inspired the provisions of the 1978 UK Act?

I wouldn't really call that statute "age-old", especially not in 1977.

The German Empire's patent law of 1877 was drafted by and for corporate interests, and completely ignored the inventor. No reward or recognition could be expected for your creation if you were an employee. The debate to rectify this situation lasted for more than 50 years.

Many drafts for improving the German law w.r.t. inventor rights were proposed in the first part of the 20th century.

It was the patent law of 1936 which finally managed to improve the inventor's position. Yes, 1936.

This law managed to avoid the kookiest stuff advocated by nazi organizations such as the DAF, or Hitler's conceptions of the relationship between the inventor and the "Volksgemeinschaft" expounded in Mein Kampf. But it was definitively the current ideological context that permitted movement on this issue.

Later, in 1942, concrete guidelines for setting compensations rather favourable to inventors were approved by Albert Speer. The ongoing war hindered opposition by industry.

Scrubbed and cleansed version of these statutes were taken over by the new Republic after 1949. Industry representatives opposed them hypocritically as being "nazi", even though it was the basic substance (inventor recognition trumping corporate interests) they really had a beef with.

This question is analysed is a few books, the most important ones being, in my opinion:

1) Kees Gispen, Poems in Steel: National Socialism and the Politics of Inventing from Weimar to Bonn, Berghahn Books, January 2002

2) Alexander K. Schmidt, Erfinderprinzip und Erfinderpersönlichkeitsrecht im deutschen Patentrecht von 1877 bis 1936, Mohr Siebeck, 2009

(The latter book is evidence that the law faculty at Bayreuth can do better than producing phony academic titles for Brylcreem politicians...)

Yes, I find the apparent continuity between regimes to unsettling. I note that Germany started from a corner where corporate interests primed over the inventor's, whereas in the United States the person of the inventor has in practice very few rights in a system purportedly created for his benefit.

MaxDrei said...

Good stuff Fly. Thanks. For me, "age-old" is anything even older than me.

You will understand that I hold back from any comment on employee inventor rights under US patent law. As Paul Cole reminds us, US readers are quick to take offence.

Anonymous said...

The expression used in the heavily-unionized UK public sector is "Rewards to Inventors". A quick Google will bring up details of a various schemes. Otherwise you can put in a request under the Freedom of Information Act for the details.

Anonymous said...

Alternatively your friend could also try asking the TUC if they have any examples or minimum standards. Or, as public-sector "RTI Schemes" are, as said by someone above, likely to be your friend's best bet, perhaps even "Prospect" the trade union which represents engineers and scientists working for public sector bodies, or the "University and College Union", which represents university researchers.

Toshiko Takenaka said...

Dear All,

A happy new year! Sorry for my belated comments. Thank you for your inputs and invaluable information on compensation or rewards to employees in U.K. and elsewhere. They are alll very helpful. I will also look into sources suggested.

Toshiko

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