If you work in the office, does this mean that your employer has ownership over everything you produce? What if you are developing a piece of hardware, or using your own laptop or device? The answer in short is, it depends. As a general principle, an employer owns the intellectual property its employees create during their employment. If, however, it has been developed by an employee, other than in the course of employment then the intellectual property rights lie with the employee.

What Does The Course Of Employment Mean?

If you need to create intellectual property as part of your employment responsibilities than usually, this will be in the course of your work. For example, if you are responsible for working towards a technology that detects health problems or you are contracted to develop software that generates the data of a business better, then it is safe to say that the technology or software falls within the course of your employment. However if you are not hired to create intellectual property, then you may own the intellectual property rights, provided that you didn’t use company resources.

Considerations of whether your work was made or created in in the course of your employment may refer to:

  • How your written employment contract describes your duties and responsibilities; and/or
  • Whether your employer or any other staff has directed or contributed to the creation of the intellectual property.

Signing Over Your Entire Brain

Gone are the days where you clock on, perform your duties for the day and go home – more often your work continues long past 5 pm. Have you ever been in a situation where your employment contract requires you to sign off on a provision that gives your employer the rights to your ideas or inventions even if it has nothing to do with your job? The courts may find such restrictive clauses invalid, however, you should ensure that you read your employment contract carefully.

Sometimes provisions regarding competing against your employer are so expansive that it will state that even if you have invented or created something after your employment terminates, your employer will have a claim over the ownership rights. Even if the case has no merit, the threat of litigation could be very damaging if you have gone out on your own for example and require capital to get your new business off the ground. Fortunately, such clauses will likely be a futile attempt at establishing rights in your intellectual property. This is especially true if the work was not created in the course of your employment or if your idea, device or work was carried out in your spare time and without the use of company resources.

What If I Am Working On My Personal Laptop or PC Device?

Again, it depends whether the work you are doing on your device falls within the course of your employment. To reduce the risk of your employer claiming rights in the work you create on your device, you should avoid working on your personal laptop at work, or using it for work-related projects.  

Tips to Protect Your Intellectual Property

Write It Down

Sometimes it can be hard to prove important details, like when the invention or idea was created. To reduce the chance of legal battles over who owns the intellectual property you should keep meticulous records. Keep a diary for example of the dates you worked on your project and the stages of its development. If you prefer an electronic record, you could send an email to your personal address each time you contribute to your work so that there is a record of the date and time as well.

Choose Your Times Carefully

Obviously, if you are employed to work nine to five, then working on your project during evenings and on weekends is best.

Use A Different Device

Never use any tools, resources or devices that belong to your employer. Ensuring you use your personal laptop is a good start.

Key Takeaways

  • If you have developed intellectual property in the course of your employment, that is, if you have to create intellectual property as part of your responsibilities at work, then usually your employer will own it;
  • If you have created intellectual property that falls outside of the scope of your work duties then the intellectual property rights will generally belong to you (provided you have not used work resources to create it);
  • Be careful that your employment contract does not allow your employee a broad power to make a claim on your intellectual property created during your work period or after.   

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If you have any questions about your intellectual property rights, get in touch with our IP lawyers on 1300 544 755.

Esther Mistarz

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