Human resource practitioners and employers need to consider intellectual property issues carefully in their policies and manuals.
This is especially in organisations where innovation and invention are required such as health, pharmacy, information technology and advertising sectors, among others. They need to be careful and have in place an intellectual property policy and capture the same in employment contracts.
In most universities where there is a lot of research and development, there is an intellectual property policy setting out from the onset who would own any inventions made and what mode of remuneration should apply. However, many organisations do not have intellectual property policies and when a dispute arises it becomes very difficult to manage.
Most of the work created by innovative employees qualifies either as copyrights or patents. However, a technovation certificate is granted depending on the job description of an employee in question. If one’s work does not involve invention, then one is entitled to a technovation certificate from the employer despite any contrary provisions in the employment contract. For such an employee, it does not matter if the intellectual property policy or the employment contract states that all inventions belong to the employer.
The law recognises the rights of employees who go beyond the call of duty. According to the Industrial Property Act, they have to be issued with a certificate and their rights to the invention must be established.
A technovation is a solution for the organisation in technology, which relates to its business. A second requirement is that the employee who comes up with an invention must show that it is not part of one’s job description to come up with such invention. For example, a person employed as a legal officer and develops a software system that helps the employer to do certain tasks, automatically qualifies for a technovation certificate. It does not matter if the employment contract states that all rights to works belong to the employer.
Many people are not aware of this right under the Act and assume that all works they do automatically belong to the employer. Therefore, they fail to gain recognition for their innovations.
How does one get the certificate? By simply filing a request with the employer who is then required under the Act to grant the technovation certificate within three months.
What would a technovation certificate entitle one to?
Once the certificate is issued by the employer, the employee is entitled to receive some remuneration based on the innovation. If there is a collective bargaining agreement, then it sets out the remuneration. However, in the absence of such an agreement, then the terms of payment are fixed by both parties.
This means that as an innovator, you qualify to receive some payment pegged on the work that you invented beyond the call of duty.
Mostly, persons who are skilled in software development and information technology are the ones to whom this applies. The right to a certificate subsists once you meet the standards in the Act.
Where the employer does not wish to use the technovation then the organisation must communicate the same early enough otherwise ‘use’ could be construed as disclosure of the same to third parties. If it can be shown that the employer disclosed use of the innovation to a third party, then it means that you should be remunerated for the invention.
What is interesting is that the provisions on technovations are straight forward and lean more towards protection of the employee such that Section 100 of the Industrial Property Act expressly outlines this. It specifically states that any contractual provisions that are less favourable to employees other than those stated in the Act shall be null and void. This means even if the intellectual property policy provided otherwise, the rights of the employee shall be guided by the Act.
For persons employed in a capacity that does not require they to innovate and they do so then the first thing to do would be to determine if your job description falls under what you have innovated. If not, then the next step would be to request for a technovation certificate for your works.
The period within which to seek the recognition provided for by the Act is three months. Meanwhile, it is important to ensure that the organisation does not use your works or disclose to third parties without establishing your rights. After this then you agree on remuneration for what you have innovated.
Mputhia is an advocate with Muthoga Gaturu. Email: [email protected]