Are assignment clauses in employment contracts transferring all present and future IP rights to an employer valid?

Ownership position

By operation of law in the UK, most Intellectual Property Rights in materials created by an employee in the course of their duties belong to the employer. This includes designs, copyrights, and inventions (which may be patentable).

For example, see the following statutory provisions:

1. •

   sections 39–41 of the Patents Act 1977 (PA 1977)

2. •

   section 2(1B) of the Registered Designs Act 1949

3. •

   section 215(3) of the Copyright, Designs and Patents Act 1988 (CDPA 1988)

4. •

   CDPA 1988, s 11(2)

The duty of fidelity means that an employee should disclose the existence of such material to the employer to allow it to benefit from the relevant intellectual property rights.

For further information, see Practice Notes:

1. •

   The duty of fidelity and fiduciary duties

2. •

   ETS

3. •

   Securing intellectual property rights from employees and contractors

4. •

   Patents—employee rights and compensation

For further reading, see Commentaries:

1. •

   Employee inventions: Roughton, Johnson and Cook on Patents [9.15]

2. •

   Teachers and researchers: Laddie, Prescott & Vitoria: The Modern