13 May 2021Are you one who likes to invent at work? Imagine you’re at your job and have just come up with a brilliant new innovation. You’ve created a better mousetrap, a breakthrough computer program, a toy that sells millions or perhaps a car that runs on water.
Who exactly owns this innovation – you or your boss? You’ve used your skills and ingenuity to invent the product. However, your employer had you on their payroll while you worked to develop the invention.
Laws governing ownership of invention
Whether you or your employer have ownership over your invention largely depends on whether you developed it in your own time using your own equipment, or at your workplace using your employer’s equipment and the work was part of your job.
The question of ownership of an invention comes under the laws governing intellectual property (IP), including the Patents Act 1990, Trade Marks Act 1995, Copyright Act 1968 and Designs Act 2003. You can also find more information on IP laws on the Austrade website and the IP Australia website.
Anything you invent at work could be claimed as your employer’s IP
Australian IP law can be complex. But generally, if you’re required to create intellectual property as part of your employment and you use your employer’s resources, then under patent and trademark laws, your employer has the right to claim ownership of what you invent at work.
However, if you weren’t employed to create any particular IP and you developed it largely with your own resources and outside work hours, then you have a case to claim IP ownership.
Record the details of your invention process
To separate your personal creation of intellectual property from the work you do for your employer, it would be wise not to use your work laptop or phone if you invent at work, nor to use work time as you develop your own IP.
Also be sure to keep a written record of your IP project, such as when and where you created it and each stage of its development, detailing the resources and equipment you used. It may be worth having a person act as a witness to sign the record.
However, the best way to maintain ownership over your invention is to work on it away from the workplace and to not use anything you obtained from your employer, including ideas or research, in developing your intellectual property.
Understand the terms of your employment contract
Ownership of IP could also depend on what work duties are outlined in your employment contract. Additionally, it could hinge on whether your workplace or work colleagues contributed to the development of the intellectual property.
Some employers insert clauses in work contracts that restrict what you can do after you leave the company, to prevent you from competing with them. Before you sign such a contract, it’s wise to get legal advice to ensure it doesn’t limit your future ventures.
Personal IP creation can be concurrent with creation of IP for an employer
Not long ago I advised a client who was successfully developing her own IP while also working for an employer doing similar work.
She had concerns that the strict clauses in her employment contract regarding ownership of any intellectual property that she created presented the risk that her employer might try to claim her IP as its own.
Due to the success of her personal innovation, she had decided to move forward to the next stage of development and thought that the only way she could safeguard her ownership of her IP was by resigning from her job.
I reviewed her employment contract and found that there were indeed strict conditions in it related to IP development and ownership, but they only concerned intellectual property which she might invent at work, during work time, or while using the employer’s technology, resources or premises.
I was able to advise my client that she didn’t need to leave her position with her employer and could develop her IP concurrently with maintaining her role, as long as she clearly separated these worlds from one another by using her own technology, her own premises and her own time when she worked on her personal IP projects.
