NIPC Law

Jane Lambert S.39 (1) of the Patents Act 1977 provides: "Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if - (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or (b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking." S.39 (2) provides that any other invention made by an employee shall, as between him...

Jane Lambert This is the first reported case of a successful contested award under s.40 and s. 41 of the Patents Act 1977 . In Kelly and another v GE Healthcare Ltd [2009] EWHC 181 (Pat) (11 Feb 2009). The claimants, Duncan Kelly and Kwok Wai ("Ray") Chiu, were research scientists at Amersham International Plc. They were involved with the first synthesis of a compound called P53, which later formed the basis of a patented radioactive imaging agent which was a highly successful product for their employers. It was sold under the trade mark Myoview. By this action they sought an award of compensation from their employer under s. 40 and s.41 of the Patents Act 1977. They were claiming a share of the benefit which, they say, had been derived by their employer from the patents. The above sections have now been amended by s.10 of the Patents Act 2004 with respect to patents applied for after 1 Jan 2005. As the applications for the patents in this case had be...