Divya Subramanian, a bright young IP attorney with Lex Orbis, one of India's leading IP law firms, wrote and asked me a very pertinent query pertaining to the ownership of IP created by an employee during the course of employment.
While the copyright act (section 17) states that absent a contract to the contrary, any work created in the course of employment belongs to the employer, the patents act does not carry a similar stipulation. Therefore it would appear that absent an express contract, wherein all IP created by the employee belongs to the employer, patent rights ordinarily vest with the employee. Is there any reason for this differential treatment in the two regimes?
I personally think this is more of an oversight than anything else. If brought to the attention of our lawmakers, my guess is that an amendment to the patents act to bring it on parity with the copyright act would pass through without much of a problem. But perhaps there is a deeper reason underlying this difference that I have missed. And some of you could point us to it.
As an aside, this difference between the patents and the copyrights act appears to have played a prominent part in the Upaid vs Satyam dispute, which Sumathi tracked extensively on this blog. The Indian experts hired by both parties in this dispute (Himanshu Kane vs S Majumdar) testified on this difference, albeit reasoning differently to reach different conclusions.
Anyway, below is the text of Divya's note and query to me:
"The aim of each of the IP regimes is undoubtedly to grant protection against misappropriation and monopoly on the fruits of labour invested on one’s Intellectual capital. In this endeavour, ownership of the IP and transfer of rights therein is crucial and pertinent.
One of the primary differences between Patents and Copyright (CR) is the manner in which a claim on them exists- A patent right not being acquired until a patent is granted by the IP Office , while a CR comes into existence the moment the creative piece of work comes into existence. Further, looking at an employer-employee scenario, a formal declaration as to one being the true and first inventor and an assignment is required to acquire a patent on an invention/process.
While, in a case where the course of employment involves creation of something that qualifies CR registration, the CR automatically vests in the employer. However, when the employer applies for CR registration (since CR automatically exists upon the work coming into existence, and the right as the first author of the work still rest with the employee), the employee is required to give a certificate of no objection to allow the employer to apply for CR. If this certificate is not filed, the application is considered incomplete. I wonder if the no objection certificate has the same force of law or effect as a deed of assignment in view of the fact that the author still has a right as a first author in the CRed work, but an inventor shall have no such right upon assignment of his invention to his employer for application for a patent.
While comparison across jurisdictions of a regime is pertinent, is it pertinent to compare and generalize/bring parity between practices across different types of IP? I am wondering ... if we should bring parity in practices in the different regimes, or leave these independent, owing to an obvious difference in the subject matter covered under each IP. Further, particularly on the aspect of employer-employee relations vis-a-vis IP is there need to bring in uniformity? Or, is there something that this limitedly-enlightened mind misses? Would like to have some of your perspectives."