MODULE THREE CAPTURING INTELLECTUAL PROPERTY RIGHTS CHAPTER NINE IP INFRASTRUCTURE AND INSTITUTIONS NATIONAL, REGIONAL AND INTERNATIONAL 9.1 Issues in registration and IP protection 9.2 IP management 9.3 WIPO 9.4 UPOV 9.5 Other IP resources 9.6 IP Capture Exercise
9.1 Issues in registration and IP protection The first principle of IP rights is that the creator of IP is the owner of the rights. However, when an employee uses the employer’s resources to generate IPs, the IP rights accrue to the employer, especially if the individual or individuals in question were employed to do such work. Where a researcher is contracted to develop a processor piece of equipment or a plant variety by a customer or employer, the IP rights will normally go to the customer or employer that paid for the work. However, when an employee generates IPs in his or her own spare time with own resources and in afield totally different from his employment, that individual will own the IP. For example, if one is employed as a plant breeder but invents a novel machine or process for the production of tomato ketchup, the ownership will belong to that individual if such an invention was done with the individual’s own resources. If one is
102 involved in sponsored studies, it would be important to clarify the IP ownership issues at the beginning of the activities. The University of Greenwich states its IP rights as follows The University hereby asserts its rights of ownership in IP created by University Employees during the course of their employment. In accordance with the provisions of the Contract of Employment for Lecturing Staff (which includes academic and research staff) in use since 1992, all staff (and students on enrolment) employed on that contract have agreed to assign their IP rights to the university. However, the University recognises the need to provide • Clear incentives for the creation of IP • Clear and efficient University services which can evaluate and protect IP, and then decide on the most appropriate arrangements for its transfer into use, • Fair and equitable arrangements for sharing any net commercial returns from commercialisation of IP, and • Protection of the moral rights of University Employees as defined in the Copyright, Designs and Patents Act 1988. Under normal circumstances, if a scientist is engaged by someone or an institution to develop anew piece of equipment, processor plant variety, the intellectual property rights for the product will accrue to the institution or individual that had made and paid for an order for its development. If you are engaged by a laboratory as a worker or under contract to develop anew plant variety, it is the laboratory that will own the patent. You are also under oath not to disclose such information to the competitors of the Laboratory fora given time even after leaving that particular company. You are further prevented from engaging in production of the same equipment or materials
103 you were engaged to do when you leave the employment of that company or laboratory. A former employee maybe liable to prosecution ifs he is engaged in production of goods or services similar or the same as those of his former employer especially if this is done within a short period of leaving employment. Revelation of secrets to anew employer will also attract sanctions to the employee under the unfair competition laws.