IPEC sides with Netsweeper in employee patent dispute
The UK’s Intellectual Property Enterprise Court (IPEC) has ruled that an employee’s invention is owned by his employer, Canadian company Netsweeper, even though the invention was developed in the employee’s home.
Judge Richard Hacon delivered the IPEC’s decision on Wednesday, May 22.
At the centre of the dispute was Patent Cooperation Treaty (PCT) application number WO 2013/177687 A1, which claimed an invention covering a method of selectively blocking internet web pages. Netsweeper, a seller of internet filtering software, owns the PCT application.
Bradley Kite, a former employee of Netsweeper, said that he developed the invention claimed in the PCT application whilst working at the Canadian company. Kite argued that he, rather than Netsweeper, is entitled to the rights in the PCT application.
Kite said that, whilst at Netsweeper, he disclosed information relating to the invention to Jeremy Erb, who was named as the inventor on the PCT application.
Kite then set up his own company, Prosyscor, to develop and commercialise filtering software, and he sought to claim ownership of the PCT application through Prosyscor.
Netsweeper accepted that Kite should be named as joint inventor on the PCT application, as well as any patent applications and granted patents derived from it, but that Erb would remain as a joint inventor because part of the invention consists of Erb’s improvement on Kite’s idea.
Netsweeper also said that naming Kite as a joint inventor does not change Netsweeper’s ownership of the PCT application, because Kite’s contribution was made whilst he was Netsweeper’s employee.
On Wednesday, Hacon stated that “an invention made by an employee will belong to him unless it was made in the course of the categories of duty”. He noted that, in this case, Kite was employed as a systems engineer to write software and create product capabilities.
Hacon said: “He was required to bring all his ideas to the product management team. On Kite's own evidence, Netsweeper offered web-filtering software, something he knew before he joined.”
Therefore, Hacon said he had “no doubt” that creating software that filtered access to websites “fell squarely within [Kite’s] normal duties.”
Hacon rejected Prosyscor’s claim that Kite had done work on the invention in the evenings on his home computer as “secondary”, because such acts were “very much the sort of acts which the individual was paid to carry out for the company”.
Finally, with regards to Kite disclosing his idea to Erb, Hacon held that the ideas exchanged at Netsweeper were “ideas for development by the company”. He added that this workplace disclosure also supports the argument that the innovation occurred as part of Kite’s employee duties.
Hacon concluded that Netsweeper is entitled to ownership of the PCT application.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories:
Samsung scores patent win at Federal Circuit
