Who owns an Invention at Birkbeck?
Advice for Students and Researchers
The term ‘Intellectual Property’ means certain types of creations of the mind to which individual
nations decide to grant property rights. Common types include Copyright, Designs, Patents,
Trademarks and other related rights such as databases.
While there are a number of important differences between the various forms of intellectual
property, one factor that they share in common is that they establish property protection over
intangible things such as inventions, signs and information. But, who normally owns these
inventions? Here are some scenarios…
Research conducted under a grant or contract
PhD and some MSc courses are funded by funding bodies like the MRC or the BBSRC, and there is
often a grant document that gives clear rules about the project. Persons working on the grant are
likely to be bound by the terms, and should check the specific wording.
Example: A research grant might state in the ‘intellectual property’ section that ‘all intellectual
property arising from the grant shall be owned by the host institution’.
Note: PhD research, especially in the sciences, is often guided and inspired by the academic
supervisor. As such, an invention is often created in large part by the supervisor. The good news is
that supervisors (and Birkbeck, as their employer) are usually happy to generously recognise the
contribution of their student. The employer might own the majority of the Intellectual Property, and
can take ownership of the student portion, to develop it on their behalf.
Computer Software & Databases
Computer programs are some of the most complicated types of intellectual property, and specific
advice should be sought from Birkbeck’s Business Relations team.
Typically, the written program code for some software is covered by Copyright, and would be
treated like any other Copyright material. According to UK Copyright Law, the author of a work is
the first owner of any copyright on it. But, if the copyright work is made by an employee in the
course of their employment, then their employer is the first owner, unless there is an agreement to
the contrary.
Therefore, students typically own their own Copyright. On the other hand, employed researchers
may own Copyright, but they should seek advice. An important factor that has to be considered to
determine if a work has been made in the course of the employment (and hence if the copyright in
the work is owned by the employer) is whether the making of the work falls within the types of
activity that the employer could reasonably expect or demand from the employee.
Example: Missing Link Software v Magee case
In this case the question arose as to whether software written by an employee outside work times
was owned by him or by his employer. The employer argued that since they had employed the
defendant to write programs of the kind in dispute, similar programs, even if written in his spare
time, were created in the course of his employment, and hence owned by the employer. The courts
held in favour of the employer.
Computer programs, apart from being protected by Copyright, can be patented if they solve a
technical problem. Often the patent will cover the broad scope of the solution, where one
embodiment is a computer program. Whether a computer program can or cannot be patented is a
very complex situation, and advice should be sought.
Databases have certain rights and protections connected with them. The law protects databases
in two ways: under copyright law and by way of a database right. In both cases the protection
arises automatically, upon creation. Databases are typically owned by the employer who paid for
them to be compiled.
Patentable Inventions developed by company employees
Patents recognise something that is new, goes beyond the current knowledge in the area, is
inventive and can be used ‘industrially’. A key aspect of any patent is the ‘invention’, which is the
core of the new idea.
English law provides that an invention belongs to an employer in two situations:
1st situation:
Employers own the inventions of their employees, where generated;
 During the course of their normal duties
 Outside normal duties, but on a task specifically assigned to them
and in both cases above, where that invention might reasonably be expected to have arisen from
the carrying out of such duties.
The factors that have to be considered are:
- The scope of the employee’s duties
- when and where the invention was made
- which facilities were used by the employee
- which is the relationship between the invention and the field in which the employer operates
- what is the extent to which the employee was engaged to invent or design.
Example: A company sends an employee on a course, to help develop an improved product. The
employee has course costs and travel paid for, and attends the course during working hours, while
receiving full pay. The employee invents an improvement to the company product during
attendance of the course. In such circumstances the company would own the IP.
2nd situation:
The other situation in which an invention made by an employee will belong to their employer is
concerned with inventions which are made by a person who is under a special obligation to further
the interests of the company. Directors are the most common example of such especial obligation.
While the normal or special duties of an employee may not require them to invent or design, this is
overridden by the fact that their seniority effectively places them under legal obligation not to
compete with the firm. This principle means that if an employee who occupies a senior position
within an organisation produces an invention and it can be shown that the invention was made in
the course of the duties of the employee, the invention will belong to the employer.
Other important rules in connection with invention’s ownership:
 A contract of employment might stipulate that all inventions of the employee are owned
by the employer, but such clauses are likely to be unenforceable under current English
law. This is because it is not possible to diminish the rights of an employee to an invention
through their contract, where the invention would otherwise belong to the employee.
 If the benefit of the invention turns out to be ‘outstanding’, certainly beyond just
‘significant’, then the company may be obliged to ensure that the employee enjoys a fair
share of the benefit. The rare cases of outstanding benefits can produce very large sums
for the inventors.
Student study
Students are typically not employees of the College, and so they own intellectual property that has
been solely generated by them.
Example: A student signs up for a course at Birkbeck. They pay for an academic taught course
themselves, and attend during evenings. The area of study has no connection with any current or
past employers, and during their course of study the student creates a new computer program.
This intellectual property would be owned by the student.
Complex cases
Most cases of invention are complicated! If you do need further advice, please contact Chris
Loryman at UCL Business, who provides free IP advice to Birkbeck staff and students:
c.loryman@uclb.com
Reference table of simple cases
Inventor and Type
of Invention:
Source of funding
at time of
invention
Any
Probable
ownership of
Invention
(Treated as
Copyright)
Research Grant
(eg Research
Council or Charity)
or company
funding
agreement
Research Grant
(eg Research
Council or Charity)
See Grant rules
Company
employee; any
invention related
to their job
Company
employee; any
invention not
related to their
job
Company (either
direct of
reimbursed)
Company
Personal/normal
educational
funding
Lab-based
Researcher or
PhD student;
patentable
invention
Lab-based
Researcher or
PhD student;
patentable
invention
Student;
patentable
invention
Research Grant
(eg Research
Council or Charity)
Check
employment
contract and take
into account the
factors explained
above and the
circumstances in
which the
invention was
created
See Grant rules
Programmer;
software code
Programmer;
Computer
program that has
a ‘technical
effect’
Compiler;
Database
Self-funded
Personal/normal
educational
funding
See Grant rules
It is important to
consider the
contributions of
other inventors,
and support
Student
Free to commercialise?
See terms of any grant or company
funding agreement, and seek
advice.
Typically the University is
responsible for commercialising
inventions. Check Grant or
company funding agreement rules
for details.
Databases may be University
property, and typically the
University is responsible for
commercialising. Check any Grant
rules for details.
The company is likely to own the
invention, and would therefore
have the right to lead on
commercial development.
Seek advice.
Typically the University is
responsible for commercialising
inventions. Check Grant rules for
details.
Seek advice.
Probably.