高等法院判决:职务作品、版权归属

Copyright — Authorship — Employee inventing method of trading financial instruments on electronic exchanges not previously so traded — Whether inventions owned by employee —Whether inventions made in course of normal duties of employment — Patents Act 1977, s 39(1)(a)

Liffe Administration and Management v Pinkava and another

CA: Sir Andrew Morritt C, Longmore and Jacob LJJ: 15 March 2007

Where an employee was under a general duty to innovate new products for his or her employer, had the time to do so and did so in the employer’s time, and the circumstances were such that an invention might reasonably be expected to result from carrying out his duties, the employer was entitled to claim ownership in those inventions.

The Court of Appeal so held when dismissing the appeal of the defendants, Pavel Pinkava the employee and his company De Novo Markets Ltd , from the decision of Kitchin J on 24 March 2006 ([2006] EWHC 595 (Pat)) whereby he declared that the claimant, Liffe Administration and Management, was entitled to confidential information relating to the system devised by the employee and applications for US patents based on it.

The employee’s inventions had the effect of making available new classes of derivatives over the pre-existing legal and distributional channels of a futures exchange that previously could have only accommodated futures and options. The employee had been employed as a manager in the claimant’s interest rate product management team and subsequently promoted. The judge found that the inventions were not made in the course of the employee’s duties, but in the course of his specially assigned duties and that the circumstances were such that an invention might reasonably be expected to result from the carrying out of his duties.

SIR ANDREW MORRITT C said that for s 39(1)(a) of the Patents Act 1977 to apply not only must the invention be made in the course of the employee’s normal or specifically assigned duties but also that “ the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties”. He rejected the employee’s submission that the invention would belong to the employee unless he was employed to devise it because that would involve re-writing the subsection to alter “an” to “the” in a context in which to do so would deprive the subsection of any meaningful content. If the invention were to be reasonably expected to result from the carrying out by an employee of his duties it was unlikely that the so-called invention would be either new or involve an inventive step; cf s 1(1) of the 1977 Act. The collection of sections in the Act dealing with employees’ inventions was more favourable to the employee than the previous common law rules. It was also true that the Act as a whole, as proclaimed by its long title, was “ to establish a new law of patents”. There was no reason to interpret s 39(1)(a) by reference to any assumption of an intention (a) to enact either a test substantially more favourable to the employee than the old common law test or (b) to reproduce exactly that test. The test was objective, to be applied in the light of and in consequence of the prior conclusion that the invention was made in the course of the normal or specifically assigned duties of the employee. There was no reason to imply any further condition or qualification to the effect that (1) the invention was similar to what might have been expected (2) it provided a solution to a pre-identified problem (3) it achieves or contributes to the achievement of the aim or object of the employee’s duties. The combination of the two statutory conditions was sufficient without the implication of any more. The statutory test, though objective, was to be applied to the circumstances of the particular case. The judge had relied on the abilities of the employee and was well aware that the reasonable expectation had to arise from the performance by the employee of his duties. In that context he considered the employee’s abilities as a relevant circumstance. He was both entitled and bound to do so. The claimant had established that it was the owner of the inventions on the basis that the inventions were made in the course of the normal duties of the defendant as an employee of the claimant rather than the specifically assigned duties on which the judge had founded his conclusion. In either case it was reasonably to be expected that an invention might result from the carrying out of his duties by the employee.
Longmore LJ agreed with the judgment of Sir Andrew Morritt, C.

Jacob LJ delivered a judgment concurring in the result.