Avoiding Intellectual Property Disputes
Verbauwhede, Lien, International Trade Forum
Businesses often rely on employees or independent consultants to develop their intellectual property assets and assume that they automatically own the intellectual property rights on the resulting creations. However, this is not always the case.
National laws vary broadly, both as to who is the first owner and how ownership can pass to others. To prevent misunderstandings, it is best to clarify the issue of intellectual property ownership in any agreement with employees or independent contractors and , preferably, to get specialist advice.
Intellectual property created by employees
Many employees create intellectual property in the course of their employment. This may be a software programme, article, architect's plans, new logo, new product or product packaging, business plan, invention or many other types of creative work. But who owns the rights to these materials: the creator or the employer? The answer varies from one country to another and even within a given country, it may depend on the law and the employer/ employee relationship.
In many countries, the employer owns an invention made by an employee if it is related to the employer's business, unless the employment contract stipulates otherwise. Conversely, in some countries the rights to inventions belong to the inventor, unless otherwise agreed. In other countries, for example the United States, the employee may retain the right to exploit the invention, but the employer has non-exclusive rights to use the invention for internal purposes. This is known as "shop rights".
Some countries grant employees the right to a reasonable compensation for inventions, whereas other countries do not grant any remuneration whatsoever, or only limited remuneration in exceptional cases.
In most countries, if an employee produces a literary or artistic work, the employer automatically owns the copyright, unless otherwise agreed. But in some countries, the transfer of rights is not automatic. There are several circumstances under which an employee may own all or part of the rights. For example, if the employer is a publisher, the employee will, in most countries, own the copyright for some purposes, such as the publication of a book, and the employer owns the copyright for other purposes. In other countries, if an employee generates software in the course of employment, he or she owns the copyright, unless otherwise stated in the employment contract.
The moral rights - i.e., the rights to claim authorship and to oppose changes to the work that could harm the creator's reputation - are not transferable. They remain with the author, even if he or she has transferred ownership of the economic rights to the employer. In some countries, such as the US and Canada, moral rights can be waived.
Industrial designs Generally, design rights belong to the employer. In some countries, however, employees retain the right of ownership, unless otherwise agreed. In some cases, the employer has to pay the employee an equitable reward, which takes into account the economic value of the industrial design and any benefit the employer derives from using it. In other countries, the creator of an industrial design remains the proprietor unless he or she has received a reward for it.
Intellectual property created by independent contractors
Companies regularly engage consultants or independent contractors to create material for them. In this case, both the company and the independent contractor should take care to address the question of ownership of intellectual property assets. For example, they need to decide, if the contractor presents a number of designs or logos and the company accepts only one, who owns the intellectual property rights over the remaining options.
In most countries, an independent contractor hired to develop a new product or process owns all rights to the invention, unless agreed otherwise. …