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De-Coding Indian Intellectual Property Law
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JOBS EVENTS POLLS PETITION

IP Ownership in an Employment Context: Patents vs

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Copyrights Program [Expired]
by Shamnad Basheer January 17, 2010 5 Comments ARCIALA, SMU School of Law

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Tweet Divya Subramanian, a bright young IP

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0 attorney with Lex Orbis, one of India’s
Like leading IP law rms, wrote and asked me a
very pertinent query pertaining to the
ownership of IP created by an employee
Share
during the course of employment.
0
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While the copyright act (section 17) states
that absent a contract to the contrary, any
share
work created in the course of employment
belongs to the employer, the patents act
does not carry a similar stipulation.
Therefore it would appear that absent an
express contract, wherein all IP created by
the employee belongs to the employer,
patent rights ordinarily vest with the
employee. Is there any reason for this
di erential treatment in the two regimes?

I personally think this is more of an oversight than anything else. If brought to the attention of
our lawmakers, my guess is that an amendment to the patents act to bring it on parity with the
copyright act would pass through without much of a problem. But perhaps there is a deeper
reason underlying this di erence that I have missed. And some of you could point us to it.

As an aside, this di erence between the patents and the copyrights act appears to have played a
prominent part in the Upaid vs Satyam dispute, which Sumathi tracked extensively on this blog.
The Indian experts hired by both parties in this dispute (Himanshu Kane vs S Majumdar) testi ed
on this di erence, albeit reasoning di erently to reach di erent conclusions.

Anyway, below is the text of Divya’s note and query to me:  

“The aim of each of the IP regimes is undoubtedly to grant protection against misappropriation COVID-19 & IP UPDATES
Gilead gives royalty-free licences for remdesivir to
and monopoly on the fruits of labour invested on one’s Intellectual capital. In this endeavour,
Cipla, Jubilant Life, three others | LiveMint | May 13
ownership of the IP and transfer of rights therein is crucial and pertinent.
IPAB noti es procedure for e- ling of cases until
further orders | IPAB | May 12
One of the primary di erences between Patents and Copyright (CR) is the manner in which a
Delhi HC suspends operation of IP O ce’s public
claim on them exists- A patent right not being acquired until a patent is granted by the IP O ce ,
notice dated May 4 whereby the deadline for lings,
while a CR comes into existence the moment the creative piece of work comes into existence.
payments and completion of other acts was
Further, looking at an employer-employee scenario, a formal declaration as to one being the extended till May 18 | May 12
true and rst inventor and an assignment is required to acquire a patent on an IPAB noti es procedure to be followed on hearing of
invention/process. cases through video conferencing | IPAB | May 11
IPAB noti es that it will conduct hearings only
While, in a case where the course of employment involves creation of something that quali es through video-conferencing; allows only e- ling of
CR registration, the CR automatically vests in the employer. However, when the employer urgent cases till further orders | IPAB | May 8
applies for CR registration (since CR automatically exists upon the work coming into existence, IP O ces functional at reduced capacity, but
and the right as the rst author of the work still rest with the employee), the employee is deadlines extended till May 18  | O ce of CGPDTM
required to give a certi cate of no objection to allow the employer to apply for CR. If this | May 4
Govt doesn't plan to grant compulsory license for
certi cate is not led, the application is considered incomplete. I wonder if the no objection
Remdesivir; hopes for voluntary licensing by Gilead |
certi cate has the same force of law or e ect as a deed of assignment in view of the fact that the
LiveMint | April 28
author still has a right as a rst author in the CRed work, but an inventor shall have no such right
Govt urged to revoke patent for Gilead’s potential
upon assignment of his invention to his employer for application for a patent. anti COVID-19 drug Remdesivir | SpicyIP | April 24
Publishers warn of copyright action against
While comparison across jurisdictions of a regime is pertinent, is it pertinent to compare and
circulation of PDF les of Assamese classics, an
generalize/bring parity between practices across di erent types of IP? I am wondering … if we emerging trend during the lockdown. | The
should bring parity in practices in the di erent regimes, or leave these independent, owing to an Telegraph | April 24
obvious di erence in the subject matter covered under each IP. Further, particularly on the IIT professor develops software to detect COVID-19
aspect of employer-employee relations vis-a-vis IP is there need to bring in uniformity? Or, is within 5 seconds using X-ray scan | Economic Times
there something that this limitedly-enlightened mind misses? Would like to have some of your | April 24

perspectives.” View More

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Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a
project to train underprivileged students for admissions to the leading law schools. He
served for two years as an expert on the IP global advisory council (GAC) of the World
Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for
his work on legal education and on democratising the discourse around intellectual
property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen.
Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined
Anand and Anand, one of India’s leading IP rms. He went on to head their
telecommunication and technology practice and was rated by the IFLR as a leading
technology lawyer. He left for the University of Oxford to pursue post-graduate studies,
completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His rst academic
appointment was at the George Washington University Law School, where he served as
the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in
2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian
law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and
also a visiting professor of law at the National Law School (NLS), Bangalore. Prof.
Basheer has published widely and his articles have won awards, including those
instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted
widely by the government, industry, international organisations and civil society on a
variety of IP issues. He also served on several government committees.
View all posts by Shamnad Basheer →

5 comments.

Manish Garg
January 18, 2010 at 6:29 am

Dear Shamnad,

I would like to draw some comments on this as per as ownership of patent is concerned. During
the course of employment whether there is a contract or not, any research work done on the
invention during the course of employment with the employer and for which patent rights are
sought, the ownership of patent lies with the employer and not employee, though the employee
is the inventor of the invention. In case there is a contract which spells out clearly the ownership
as to who will own the rights, that ownership will decide. In the current employments especially
employees in R & D, the ownership lies with employer unless and until the employer has diluted
its ownership in an formal agreement which spells out the ownership to employee. This however
does not happen in practical term, wherein the contract spells out ownership terms to the
employee during the course of employment, the contract generally makes it clear that any IP
that emerges out on research work carried out by an employee, its ownership lies with
employer. Search Trademarks Go

Reply ↓

Neeraja V
December 19, 2013 at 5:16 pm

Dear Mr. Garg,

Interesting how you point out that absence of a contract to the contrary any invention by
an employee during course of his employment, ownership of such invention will belong
to the employer. And I will presume that this is a con rmation that there is no need for a
declaration/ assignment by the employee stating the same. However, I would like to ask
you what is the basis of your conclusion (judgements, maybe).

Reply ↓

kamakhya
January 19, 2010 at 8:40 pm

Hi Divya,
A very pertinent question indeed! And why not, when there is an initiative to harmonize the
substantive patent law in the form of SPLT (Substantive Patent Law Treaty), to bring into line the
practices with respect to di erent IPs such as Patents and Copyrights may be a desirable one.
But before this let us just repeat what Justice Pradeep Nandrajog spelt out as the rationale
behind moral rights in Amar Nath Singh v. Union of India. [2002(2)ARBLR130(Delhi);
2005(30)PTC253(Del)], “In the material world, laws are geared to protect the right to equitable
remuneration. But life is beyond the material. It is temporal as well. Many of us believe in the
soul. Moral Rights of the author are the soul of his works. The author has a right to preserve,
protect and nurture his creations through his moral rights.”
So, do we face a situation like presence of a moral right in an invention when, suppose a
scientist in a R& D center, e ects an invention. Well, there may be an argument that an invention
is a creation so is the presence of the moral right but is there really an extension of personality
as in an author’s work? A patent is granted for the claims which describes the best method to
work the invention, whereas, a Copyright is granted to certain “intellectual products” to prevent
“copying” of these products. Immanuel Kant defended copyrights by treating an author’s works
not as objects the bene ts of which should accrue to the author, but rather as extensions of the
personality of the author and subject to protection as such
(http://www.compilerpress.ca/Competitiveness/Anno/Anno%20Hurt%20&%20Schuchman%20Ec
on%20Rationale%20Copyright.htm).
In my opinion, the nature of IP plays a larger role in keeping the practices as they are currently.
Lastly, your expression “limitedly-enlightened mind” describing yourself has set me thinking……
Bests
Kamakhya

Reply ↓

Divs
January 23, 2010 at 7:37 pm

Kamakhya,

I think the fact that the inventor gets his name endorsed in the applicn as the true n rst
inventor somewhere takes care of his moral rights in the invention, which albeit are assigned to
his employer/co. by means oif the assignment deed.

In CR.. moral rights exist, by virtue of the author having a right as a rst author. Further, he gives
a no objection certi cate to “copyright regn” by his employer, while the rst strain of right and
CR still rests in him. In Patents, the assignment of all the inventors rights… leads to the employer
being responsible for the unstated moral rights as well.. IMHO.
Wat is ur take on this???

Further, I disagree that an invention cannot be an extension of one’s personality.. but i guess
that is a di debate altogether!!!

Reply ↓

Vipul Yash
February 16, 2016 at 5:06 pm

what would be the scenario if a students develops a drug in his collage lab under the CSIR
funding by the institute?
who would be entitled for the ownership of the patent?

Reply ↓

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