'Sewing the Fly Buttons on the Statute': Employee Inventions and the Employment Context

Abstract

Section 39(1) of the Patents Act 1977 governs the ownership of inventions devised by employees in the course of their employment. Introduced ‘to codify in a few lines the accumulated common law experience’ prior to 1977, it does not expressly differentiate between employment fields, and has been widely assumed to apply indiscriminately, without regard to the particular context of employment. The purpose of this article is to revisit that assumption. In the argument made, section 39(1) was built around a private sector paradigm, the courts’ departure from which is supported by a ‘rational reason’ in the Shanks v Unilever plc [2010] EWCA Civ 1283, [2011] RPC 12 sense. If accepted, such an argument would open the way to the kind of reasoning adopted by the Federal Court of Australia in University of Western Australia v Gray (2009) 179 FCR 346, where the nature of academic employment was held to require that inventions devised by academics be treated differently from those devised by their corporate counterparts. It would also enable the courts to acknowledge the special issues raised by the recognition of exclusionary rights of ‘property’ in respect of academic and professional inventions, the possibility of morality- and policy-based limits on such rights and the inappropriateness and undesirability of an ownership regime based on a paradigm in which not all employment relationships can be readily or satisfactorily accommodated. Such considerations have particular weight if that paradigm is to become the means for ‘sewing the fly buttons on’ a statute regarded by post-1977 courts as having been poorly drafted, as it raises the risk of the common law principles which section 39(1) was intended to enshrine becoming subverted by parliamentary caprice.

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