Intellectual Property – who owns your institution’s intellectual assets?

Creating and sharing knowledge is central to the mission of every education institution. It follows that, by protecting the expression of ideas, creativity and invention, Intellectual Property Rights (IPR) have become some of the most important assets held by all education providers, not just those engaged in high levels of research and development.

While intellectual property might come to be owned by an organisation, it is ultimately created by individuals – employees, students and consultants.

The main types of IPR and other intellectual assets

• Copyright – an unregistered IP right protecting original ‘works’, for example, a textbook or a school curriculum. Copyright does not protect an idea itself but protects the expression of an idea.
• Trade marks – badges of commercial origin which identify the source of a good or service. A registered trade mark lasts for 10 years in the UK, but there is no limit to how many times you can renew it. Your institution’s reputation is inextricably linked to its name and logo – these may be protected through a registered trade mark right.
• Patents – protect new inventions which are capable of industrial application, including both products and processes. Patents must be applied for, and if granted can last for up to 20 years.
• Know-how, trade secrets and other types of confidential information 

Ownership of IP

So, who owns the intellectual property created by employees? Different legislation applies to each type of IPR, but a common feature is that if the IP has been created in the course of employment, and as part of that employee’s normal or specified duties, it is usually owned by the employer.

Non-employees (e.g., students, consultants or contractors) will own the IP in their intellectual creations, and institutions who wish to benefit from this (by way of assignation or a licence) must do so through contractual means or as part of a student policy. Matters can become complicated when third-party or public funding is involved, and policies require careful consideration and drafting to balance the key objectives of knowledge creation and exchange, generating revenue to fund vital operations, and furthering the public good.

Consultants may also be employees – in which case their employer could have an ownership claim to IP created in the course of their employment. This could have implications for any IP licence or assignation agreements.

The potential value of IP makes the issue of ownership a contentious one, with each case depending on –

1. whether the individual is an employee and,
2. whether they were acting within their normal or specified job responsibilities.

Determining employment status

The choice of words used to describe the individual, or the agreement you have with them, is not a deciding factor in determining an individual’s employment status. The contract will be considered as a whole, considering factors such as:

• The degree of control you have over the individual in terms of the work to be completed, where the work is carried out and when it must be done
• Whether the individual is required to provide a personal service
• Whether you provide tools or equipment for that person to carry out their role
• Whether you provide employee-type benefits such as sick pay, bonuses etc.

Course of an employee’s duties

Detailed job descriptions and the wording of your employment contracts are important to the question of IP ownership. Other signs which might point towards IP being employer-owned include whether:

• The work has been created during the employee’s normal working hours
• The work has been created on company property using company resources
• The work is particularly relevant to the organisation’s business
• The work is the product of collaboration between multiple employees

The fact that an employee has created something at home, in their own time and using their own equipment does not prevent their employer from owning the IP. The key question is whether the work is done within the course of the employee’s duties.

Recommendations

Review your employment contracts – do these clearly set out an employee’s job role? Do they adequately define the relevant types of IP that an employee is likely to create and contain provisions about ownership of IP created in the employee’s role?

Update job descriptions – an employee’s role is likely to evolve over the course of their employment. Contracts and job descriptions should be reviewed against employees’ duties.

Seek legal advice depending on individual circumstances. Different rules apply to different types of IPR and the legislation is complex. While the organisation may have come to own the IP, the employee could still be entitled to additional compensation in certain circumstances (for example under patents legislation) or could hold non-economic moral rights (under copyright legislation).

If you have questions on anything that’s been covered above or if you need legal advice on intellectual assets, please get in touch with Douglas McLachlan or your usual Anderson Strathern contact.

You might also be interested in the following resources:

• Could you make your own clean energy? Four things to understand
• Fishing – one of the UK’s most dangerous industries?
• Greenwashing – what does it mean and why does it matter?

Legal disclaimer