Frequently Asked Questions
How do I know if something is protected by IP rights?
The different laws have different requirements for protection. You will have to ascertain which area of IP law is involved (is it a copyright work or a possible patentable invention?) and then you need to check if your work meets the requirements specified for that type of IP right.
If I write a research report in my free time and at home, does it belong to me?
Remember that copyright works created in the course and scope of your employment belongs to your employer.
Will copyright works I create automatically belong to my employer?
Yes, the Copyright Act provides that all works created within the course and scope of employment belongs to the employer.
Is it necessary to have a clause on copyright ownership in the employment contract?
No, it is not necessary to stipulate this in the employment contract, the ownership vests automatically in the employer.
Will inventions automatically belong to my employer?
No, where the invention was created within the course and scope of employment and the employment contract stipulates that the employer will be the owner; the patent will belong to the employer.
Is it necessary to have a clause on patent ownership in the employment contract?
Yes – refer to FAQ 5.
What is "scope of employment"?
Scope of employment relates to the things you have been employed to do. Even where a mathematics professor writes poetry during office hours and on his employer's equipment, the poetry will belong to him as it will be outside his scope of employment although it is inside the course of employment.
What is "course of employment"?
Course of employment relates to things done while working for an employer. If the mathematics professor solves a complex mathematical equation while mowing his lawn, the mathematical equation will be deemed to have been created within the course of employment.
Are there any provisions relating to patent ownership which an employer may NOT include in an employment contract?
Yes, the contract may not contain a clause stipulating that the employer will be the owner of inventions made outside the course and scope of employment and the contract may not contain a clause limiting the rights of an employee to an invention more than one year after termination of employment.
Who owns the intellectual property created by students during their studies?
The ownership of students' IP in provided for in every institution's policies and if the institution wishes to obtain ownership of IP rights created by students during the course ands scope of their studies, the student must sigh a form assigning rights to the institution. Where an institution wishes to become the owner of IP created by students, it is normally provided for on the registration form.
Who owns the intellectual property created by an independent contractor working on a research project?
The independent contractor will normally be the author and owner of copyright and the inventor and have the right to apply for a patent, unless a written agreement was signed by the independent contractor in which the contractor assigned his or her rights.
Why is it important to keep any new technological development confidential?
Confidentiality is very important as it will not be possible to patent an invention after it has been made available to the public.
Can I file my own patent?
An inventor can file his or her own provisional patent application. A complete specification must be filed by a patent attorney within a year of filing of the provisional patent application. The complete patent application must be substantially based on the provisional patent application and it is therefore important to make sure that the provisional patent application is drafted correctly and that it covers the technology to be patented adequately.
What is the purpose of a functional design registration?
Functional designs protect the shape or configuration of an article that is dictated by its function. This form of protection is to address lower levels of technological advancements and could be applicable to a new design of a water tap or a valve that incorporates a new function.
Why is it important to keep records and reports of research activities?
It is important to document advances in research – this information will be very helpful when an application has to be made for a patent to determine the scope of the invention and the particular claims that may be made. Written records are also important to establish the date of the creation of a copyright work as well as authorship.