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Patent Ownership: Being an employee did not benefit Mr Kite!

Date: 31 July 2019


In Prosyscor Ltd v Netsweeper Inc & Ors, the Intellectual Property Enterprise Court has held that a former employee named as one of two individual inventors was not entitled to ownership of an international patent application for a method of discriminating between requests to access a website, and that there had been no breach of a confidentiality agreement.


As the former employee’s contribution to the inventive concept of the claimed subject-matter had been made in the normal course of his duties, the rights in the invention belonged to the employer under s.39 of the Patents Act 1977.


In giving his decision, H.H. Judge Hacon confirmed that “acts of a nature such as to be within the normal course of an employee’s duties do not cease be so merely because the employee decides to carry out those normal duties at home and/or outside office hours and/or on his own equipment”.


Our article has been published in the Computer and Telecommunications Law Review (CTLR) (2019) Vol. 25 Issue 6 pp. 156 – 158.


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