Photo Credits: Sebastian Herrmann (Unsplash)

Claire La Mantia is a Guest Writer and a 2L JD Candidate at Osgoode Hall Law School.

Determining whether an employer or an employee owns the intellectual property of a work produced during the course of employment can be challenging. While an employer may have invested significant resources to facilitate the production of an invention and wish to capitalize on their investment, their employee also likely devoted significant time and energy into developing the invention and may feel entitled to benefit from its associated IP. Although different types of intellectual property protections may apply, including copyright, patents, industrial designs, trademarks, and trade secrets, this article will focus on private and public sector employees’ patent rights to inventions produced during the course of their employment.

Private Sector Employees

The Patent Act contains no express provisions pertaining to the ownership of inventions produced by an employee during the course of their employment. However, common law jurisprudence indicates that employees are generally presumed to own patent rights in these circumstances. One exception is where an employee is specifically hired to invent something for the employer, as was determined in Comstock Canada v Elected Ltd. In determining whether an employee was “hired to invent”, courts may consider eight factors:

1. The employee was hired for the express purpose of inventing.
2. At the time of hiring, the employee previously had made inventions.
3. The employer put incentive plans in place to encourage inventions and product development.
4. The employee's conduct following the creation of the invention suggests that the employer is the owner.
5. The invention is the product of the employee being instructed to solve a specific problem or invent a solution.
6. The employee sought help from the employer or consulted the employer in making the invention.
7. The employee created or developed the invention with the employer's confidential information.
8. It was a term of the employee's employment that they could not use ideas that they developed to their own advantage.

As such, employees intending to patent inventions made during their employment should be aware of the purpose of their employment and the assistance or instruction provided by an employer in developing the invention.

A written contract including an express contractual term contrary to the presumption of employee ownership also overrides the common law rule. Each party would have to approve an express provision granting the employer ownership of any work produced by an employee through their employment in order for the provision to apply, but the provision would provide employers a stronger guarantee of IP protection than relying on the “hired to invent” exception. Private sector employees should read contracts carefully to understand their obligations to their employer and whether the presumption of employee ownership of IP produced during the course of their employment could potentially be refuted. 

Public Sector Employees

In contrast to the private sector’s presumption of employee ownership, a reverse presumption applies to the patent rights of public sector employees. The Public Servants Inventions Act (PSIA) indicates that any invention produced by a public employee in the scope of their employment duties or made using the facilities or funding provided by or on behalf of the federal government, and inventions connected to or resulting from one’s employment in the public sector, are the property of the federal government. This applies to any new and useful art, process, machine, manufacture or composition, or any new and useful improvement. 

However, public service employees may obtain the relevant minister’s permission to file a patent for their invention outside of Canada. Public service employees may also file patents for their inventions in Canada by disclosing their status as a public servant on their patent application. Ministers may compensate public servant inventors for their work where the invention in question is determined to be the property of the federal government.

The question of IP ownership in the public sector could unfold in Canada following the firing of a publicly employed scientist at the country’s highest infectious disease laboratory, the Winnipeg-based National Microbiology Lab (NML). A recent National Post article revealed that Dr. Xiangguo Qiu filed patents for two inventions in China, each pertaining to work that she conducted as a civil servant at the NML in Canada. As a public service employee, the PSIA applies to these inventions. The question remains whether Dr. Qiu obtained permission from the applicable minister to patent the inventions in China or violated the PSIA in filing patents outside of Canada.

Generally, it is important for all employees to be aware of their obligations to employers and their right to retain ownership of their inventions produced as part of, or in connection with, their employment. Part of this awareness is an understanding that an employee’s obligations and rights may differ depending on whether they are employed in the private or the public sector.