You may have observed in newspapers and court proceedings that disputes related to intellectual property rights are increasing at an alarming rate. The status quo is not shocking is for the obvious reason; Intellectual Property (IP) has become a tradable commodity and made up 70 percent of total assets on Statement of Financial Position (SFP) of big enterprises. Certainly, such disputes are propelled by rights and benefits issues. With a general acceptance that modern invention is performed by inventors in their garages, few would differ with me that today most patentable inventive activities occur in corporate organization, and university settings, however most individuals who would be labeled inventors are employees of these institutions. With IP gaining momentum and best practices coming to light following the promulgation of IP laws, tug of war within the IP arena both in Namibia and around the world are probable.
In this article, I will discourse the issue of commissioned work in the
field of patent.
IP refers to creations of the mind: inventions; literary and artistic
works; and symbols, names, and images used in commerce. The same may be protected
as patent, utility model, copyright, industrial design, trademark, and
confidential know-how. A patent specifically is an exclusive right granted to
an inventor for a new invention. It can either be rights to a product or a
process that generally provides a new way of doing something, or offers a new
technical solution to a problem. Above all, for a patent to be granted
technical information about the invention, must be disclosed to the public in a
patent application because the primary aim of IP is to encourage innovation and
subsequently ensures a knowledge-based economy.
Typically, for a patent to be granted in any country, the invention must
be new and not registered anywhere in the world. By extension, patent
protection is territorial; meaning the exclusive rights conferred are only
applicable in the country or region in which a patent has been filed and
granted. Interestingly, the patent system is not a one size fit all, thus
patentability requirements may vary from one jurisdiction to another. One may
file for a patent in as many as 153 member countries through a single
international application filed through the Patent Cooperation Treaty (PCT) and
Namibia is a signatory. PCT is an international treaty administered by the
World Intellectual Property Organization (WIPO).
Inventors are required to seek
protection in other countries within 30 months from the filing date of the first
application. It is rational for an inventor to protect the innovation in potential
countries of commercialization because patent rights can only be enforced in a
country where the patent is granted; there is nothing like universal
protection. It is a sad truth that an invention can be exploited, commonly
referred to as freeriding, without recourse in any jurisdiction where it is not
protected. Patents can be protected for a period, not more than 20 years from
the filing date of the application as per the Paris Convention where Namibia is
a member.
Patent rights can be very challenging especially
where two or more persons are involved. Masses regularly confuse patent Inventorship
with ownership or assume that they are the same thing but they are distinct
concepts; the owner of a patent enjoys all rights and benefits granted by the
patent, whereas the inventor is initially the creator. The inventor is not
always the owner of the patent, therefore he or she does not always enjoy the
patent rights, this practice is common in commissioned work or works for hire.
Commissioned work lightly referred to a situation whereby companies or individuals
hire a consultant or employees to develop new products, improve processes,
research on new technologies and develop new markets. Research institutions and
Universities are mostly hired to research or develop an invention where the
person who commissioned the work provides funds subject to whatever agreement.
In the latter case, questions like; who will own the IP created and who may
benefit from access to the IP are inevitable. To this end; The Namibian
Industrial Property Act (Act 1/2012) provides that, if an invention is made in
the execution of a commission contract or a course of employment contract, the
right to the patent belongs to the person who commissioned the work unless
there is a written contractual provision to the contrary.
To avoid disputes concerning patent ownership with independent
contractors, research institutions, or employees, businesses and universities
should always reduce their intentions to writing and include a provision in a written
agreement that contains a clause stating that the work created by the
independent contractor is considered a work made for hire. This is rational in
resolving future disputes.
This article should not be construed as legal
advice or legal opinion on any specific facts or circumstances. The content is
intended for general informational purposes only.
By:
Onesmus K Joseph - MBA, ACIS, BAP, CFIP, PPL
MPHIL Candidate - KNUST (Kumasi; Ghana)
Governance Professional
josephonesmus@yahoo.com
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