How to Determine Patent Ownership if the Inventor is an Employee

Businesses conduct patent registration in the UAE to protect their inventions or innovations from competitors. However, many people often fail to realise that an inventor and a patent owner can be two different persons. For example, a company can own a patent in the UAE even though the inventor is an employee of the company. Understanding this crucial difference between inventorship and ownership is critical for businesses planning to register their patents in the UAE.

We need to dig deep into the UAE Patent Law (Federal Law No.17 of 2002 as later amended by Federal Law No.31 of 2006) to understand how to determine the patent owner when the inventor is an employee. Patent registration agents in Dubai can help companies simplify the nuances of the Patent Law regarding patent ownership. Read ahead to know further about the nuances of patent ownership in the UAE.

Who is Entitled to Patent Rights in the UAE? 

Here, our guide is Article 7 of Federal Law No.31 of 2006 ( UAE Patent Law). As per clause 1 of Article 7 of UAE Patent Law, patent rights belong to the inventor or their legal successor. If the invention has been created by two or more people, the rights will be shared between them or their legal successors. Patent registration agents in Dubai can offer more insights on this.

Who is an Inventor as per UAE Patent Law? 

Article 7 of the UAE Patent Law defines an inventor as a person who has contributed to the invention with a new and innovative idea. As per the law of patent registration in the UAE, if a person’s contribution towards the invention is negligible, they won’t be considered as an inventor. The definition of an inventor is the cornerstone of determining the real owner of a patent in the UAE as businesses will need to draw the line between ownership and inventorship.

A Patent Invented by an Employee  

A company that wishes to apply for patent registration in the UAE by claiming ownership must consider certain scenarios if the inventor is an employee. The scenarios are given below:

Invention Activities Mentioned on Employment Contract 

Employees are required to assign the ownership of their inventions to their employers if such a clause is stated in the employment contract. The clauses regarding the activities related to inventions and patent ownership must be in writing and signed by both the employee and the employer. Article 9 (1) of the UAE Patent Law states that if the invention is made during the employment or contractual work, the employer should own the IP rights unless otherwise provided in the agreement.

No Written Employment Contract Exists 

Some companies may not mention inventions made by employees or they may not even have a written employment contract. In such cases, the employee who made the invention is entitled to patent ownership in the UAE. However, Article 9 (3) of the UAE Patent Law has set out specific conditions for applying this scenario. They are:

  1. The invention should be related to the employer’s activity
  2. The employee must have used the employer’s experience, documents and other basic facilities provided to the employee
  3. The employee should immediately notify the employer through a written report

How can an Eligible Employee Claim Ownership? 

If an employee meets the conditions specified as per Article 9 of the Patent Law, they can claim the ownership of their inventions. However, the right to the invention will be granted to the employee four months from the date of submitting the written report about the invention or from any date on which the employer learned about the invention in any manner. Consult with patent registration agents in Dubai to effectively determine the patent ownership.

How can Employers Acquire Patent Rights from their Employees? 

The UAE patent law allows employers to acquire the rights over an invention made by their employees. Employers can by expressing their interest in the invention within four months from the date on which the employee submits a written report about the invention. Furthermore, the employees should be entitled to fair compensation, considering their salary, the economic value of the invention, and the benefits the employers get from the invention.

If both parties can’t agree on the compensation amount,  it can be determined through a court. Paragraph 6 of Article 9 also warns that any agreement that provides fewer benefits to the employee will be considered null and void. Consult with patent agents in Dubai for more guidance.

How Can Jitendra Intellectual Property Help you? 

Companies engaged in R&D should take care to study every nuance of the UAE Patent Law to a certain their ownership over invention made using their facilities or ‘know-how’. The process of patent registration in the UAE may become complicated if any dispute arises over ownership of the invention. Companies should take care to include clauses related to ownership of the invention in the employment contract while hiring employees. They can gain more clarity on the patent ownership by consulting with patent registration agents in Dubai such as Jitendra Intellectual Property (JIP). JIP can advise the inventors on relevant clauses of the Patent Law to help them navigate the process of patent registration in the UAE. With our advice, the companies can successfully establish ownership over their inventions without any hassle.

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