Rights of Inventors/Employee

Question 1
What are the rights of an Inventor who is an employee in Malaysia?

Answer 1
Employees, work under the term of an employment, are normally bounded by an employment contract with the employer. Most inventions are created by the employees.

Sec 20 of the Patents Act 1983 in Malaysia, explains the rights of the employees for their invention during their employment. Sec 20(1) gives the employer the right to obtain a patent on invention, when the work is done under the employment which is bounded by the contract. However, if there is an absence in any provision of the employment contract, the inventor would be able to receive the remuneration for the invention.

In certain circumstances, the invention may fetch a greater economic value than what was reasonable foreseen, the inventor can be entitled to equitable remuneration which may be fixed by the Court in the absence of an agreement between parties.

In circumstance where the employee invents something on his own free will even when his employment contract does not require him to take part in any inventive activities. The rule is that, if he goes on to invent something, in the field of activities of his employer’, using data and means placed at his disposal by his employer, the invention is still deemed to be accrued to the employer, following Sec 20(2).

However, if the parties fail to produce an agreement to support this, the Court will take into account the employees emoluments, the economic value of the invention and any benefits derived from it by the employer to provide the employee with his equitable remunerations.

It is clear that the employers do not have to pay the employees any inventor’s compensation as they have the right to their work, so long as the employment is bounded by the contract that excludes this.

Question 2
What are the rights of an Inventor who is an employee in United Kingdom?

Answer 2
In the UK, Section 39 of the 1977 Act, explain the right to employees’ inventions. In general, it gives the employer the right to own the inventions made by the employee during the course of his employment or even falling out of his lines of duty.

However under Sec 40, an employee may make an application to the Court within the prescribed period that the employee has made against an invention belonging to an employer, for which the patent has been granted. If the benefit derived from the patent is of outstanding and inadequate to the employer, the Court will order the employee to compensate the employees in addition to the benefit derived from the relevant contract.

The amount of compensation is controlled by Sec 41, to secure the employee a fair share of the benefit which employers has derived or may reasonably be expected to derive from the patent.