Compensation in inventions

 

MEANING OF INVENTION AND COMPENSATION

An invention is a new composition, device, or process. Invention can also be defined to include creative endeavors that extend beyond original, substantial improvements. An invention is also a new, useful, and non-obvious improvement of a process, machine, or product. Any invention which is new, useful, and non-obvious improvement of process can be patented. Inventions that involve processes, machines, manufactures, and compositions of matter, and any improvement thereof, are patent-able. Black’s law dictionary define an “invention” as any art, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof or any variety of plant, which is or may be patent-able under the patent laws.

Compensation is remuneration and other benefits received in return for service rendered, Compensation consists of wages and benefits in return for services. It is payment for work. If the work contract¬ed for is not done, there is no obligation to pay. (Com¬pensation) includes wages, stock option plans, profit ¬sharing, commissions, bonuses, golden parachutes, vaca¬tion, sick pay, medical benefits, disability, leaves of ab¬sence, and expense reimbursement[1].

GENERAL PRINCIPLE OF A RIGHT TO PATENT IN INVENTION

As a general principle, the right of a patent shall belong to the inventor and if two or more person have jointly made an invention, the right shall belong to them all jointly. This is provided by patent Act of Tanzania. In the inventions of new equipments, the right of ownership must firstly directed to a person who invented it, but there are other circumstances which can change the ownership of new invented materials depending to a contract existed or employment agreements made between the employer and the employee. The general principle is provided under section 14 of the patent Act Cap 217 R.E 2002[2].

THE EXISTANCE OF A CONTRACT TO INVENT

If the employer and employee had a contract to invent something, a right of compensation to inventor automatically cease, section 16 (1)[3] of a patent Act Cap217 R.E 2002. when happen during the course of job or activity an inventor invent new material, he or she cannot have a right to claim anything from employer since the employment contract imposed a duty to that person to invent and payment of salary for such activity was paid every time as they agreed.

But in other hand, there can be an employment contract between two parties, but their contract specify invention on a thing different to that invented by employee, in this circumstance, since the employee used the devices or equipments of the employer to make new invention, he or she lack any right to claim the compensation since the equipments used is owned by the employer and the invention came due the another duty imposed in him. Employer may decide to compensate him for that invention if he want, but no any force from law section 16(2) of the Patent Act.[4]

The possibility of inventor to be compensated, depend to the usefulness, profit and benefit of the invention. Some people accidentally invent things like medicines, weapons and other important things that bring a lot of money to the companies or government, in this circumstance, there must be compensation to those who invented such new equipment or they can be given part ownership of the invention as a profit to their invention. In a case of  Kelly v GE Healthcare Ltd, the Patents Court awarded two employees a total of 3% of the benefit which their employer had derived from the patents, amounting to a total of £1.5 million ([2009] EWHC 181 (Pat)).

Section 16(3) of the Patent Act Cap 217 provide a little bit on a right of compensation that a person can be granted, depending to his or her invention[5].

CONDITIONS TO BE APPLIED SO AS TO ENTITLE COMPENSATION TO EMPLOYEE INVENTOR

The invention or the patent must be of outstanding benefit to the employer, this is among things to put in consideration when accessing if an inventor is to be compensated. If an invention is of high profit to the employer, there must be a form of compensation to an employee inventor since the company make money because his or her innovation.

A patent must have been granted for an invention, for a compensation to be paid to inventor, a right of ownership must have been given to him. A patent means a full right of commercial use of a new invention by the inventor, an employee in a company who invented equipment must register his new invention by his name or by the name of a company where he work, without patent an inventor cannot be compensated with anything since the invention is not registered so no one is recognized under law to be the rightful owner the invention.

The effort and skills contributed to the invention, the word effort includes time, energy, and extra costs entered by inventor. When assessing on compensation of an inventor it is good to consider how that person wasted his time for invention, also to consider the energy that used to achieve the invention plus costs that person entered during the time of seeking the innovation. All that things tend to decide amount of money to be compensated to an inventor.

Employee’s duty is another thing to put in consideration when deciding to compensate an inventor, if there was a contract to innovate and the duty given to him, it can help to access amount of money as compensation to an inventor.

As a lawyer I would advice Mr Asajile that, together with existence of an employment contract which prevent compensation to an inventor, but still that person brought a huge profit and according to his skills, energy and time he/she must be compensated either by some amount of money or being given a part ownership of the invention[6].

BIBLIOGRAPHY

BOOKS

1.   Kurt H. Decker & H. Thomas Felix II, Drafting and Revising Employment Contracts § 3.17, at 68 (1991).

2.   Hornbeck, S. The Most Favoured Nation Clause in Commercial Treaties. Bulletin of the University of Wisconsin, vol. 6, n. 2, 1910, pp. 339 - 367.

3.   Bhala, R., Kennedy, K. World Trade Law: The GATT-WTO System, Regional Arrangements, and U.S. Law. Charlottesville: Lexis Law Publishing, 1998, pp. 60 – 64.

4.   Matsushita, M., Schoenbaum, T., Mavroidis, P. The World Trade Organization: Law, Practice, and Policy. Oxford: Oxford University Press, 2006, 2nd edition, p. 234 - 235.

5.   Van den Bossche, P. The Law and Policy of the World Trade Organization: Text, Cases and Materials. Cambridge: Cambridge University Press, 2006, p. 308

ONLINE SOURCES

http://phase1.nccr-trade.org/images/stories/mira/WTO%20-%20Chapter%204_non-discrimination.pdf

https://ecampus.wto.org/admin/files/Course_179/Module_531/ModuleDocuments/eWTO-M2-R1-E.pdf

http://scholarship.law.georgetown.edu/cgi/viewcontent.cgi?article=1003&context=imbr_2010

[1] Kurt H. Decker & H. Thomas Felix II, Drafting and Revising Employment Contracts § 3.17, at 68 (1991).

2(1) the right of a patent shall belong to the inventor

  (2)and if two or more person have jointly made an invention, the right shall belong to them all jointly

  (3) If and to the extent to which two or more persons have made the same invention independently of each other,  the person whose application has the earliest filing date or, if priority is claimed, the earliest validly claimed priority  date, and leads to the grant of a patent, shall have the right to the patent.

  (4) The right to a patent may be assigned, or transferred by succession.

  (5) Section 48 to 52 shall apply mutatis mutandis to contracts assigning the right to a patent.

[3] (1) The right to a patent for an invention made in execution of a commission or of an employment contract shall belong to the person having commissioned the work or to the employer.

[4] (2) The provision of subsection (1) shall apply when an employment contract does not require the employee to exercise any inventive activity, but where the employee has made the invention by using data or means available to him through his employment.

[5] (3) Where the provisions of subsection (2) are applicable, the employee shall have a right to equitable remuneration taking into account the importance of the invention and any benefit derived from the invention by the employer.

[6] For patents applied for before 1 January 2005, an employee may be awarded compensation where he has made an invention belonging to the employer for which a patent has been granted and the patent is of outstanding benefit to the employer