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
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 –
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:
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 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.
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, Sophie Byrne, or your usual Anderson Strathern contact.
You might also be interested in the following resources: