tag:blogger.com,1999:blog-5574479.post9216784147899957799..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: Liffe in the pinkVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger1125tag:blogger.com,1999:blog-5574479.post-45235687785970477102007-03-31T09:49:00.000+01:002007-03-31T09:49:00.000+01:00A brief comment/question on the last para. of the ...A brief comment/question on the last para. of the Court's judgment, cited here at least: <BR/><BR/>"Neither the size of the invention nor the fact that Pinkava had not been asked to do what he achieved was relevant to the interpretation of s.39(1)(a); an invention from the carrying out of his duties, normal or specifically assigned, by Pinkava had been reasonably to be expected as a result, even if the particular invention had not been expected."<BR/><BR/>I am no patent expert, but this reasoning bothers me given the facts - something appears not right. It is odd to me that the invention which the employer sought ownership of, and gained, was not a patentable invention in the UK (nor at the EPO), given that "business methods" are not within patentable subject-matter. The employee, evidently realising this, ventured further a field in search of rights. <BR/><BR/>Perhaps I am missing something - and I admit to not reading the full text of judgment. Still, there seems something fishy that a cat might like the taste of...<BR/>UI though IP right were territorial. Is it the case that an employee, under such employment terms, is reasonably expected to invent something that both is and is not patentable in the local territory?<BR/><BR/>That seems far fetched to me. If an employee creates something like this, which is not a patentable invention in the immediate legal system, the employer can still protect himself through contractual agreement. For an employee to venture, of his own, to another jurisdiction and actually acquire patent rights I think must deserve some ownership. Perhaps he should have done this post-employment or "assigned the rights" to an independent company. Apart from aspects of bad faith, I suppose the other main risk was that he would not get the rights after all - and be out of a job...Anonymousnoreply@blogger.com