top of page

Employment and IP

As an employer or employee, it's important to know what your rights and obligations are under an employment contract

Employers

If you are employing people who are creating or involved with your business's intellectual property assets, it will likely be beneficial to include some intellectual property clauses in their contract. 

​

Some things to think about include:

​

Ownership:

  • Ensuring intellectual property rights belong to the employer in any works created throughout the term of employment.

  • If these rights do not vest with the employer, they can held on trust by the employee for the employee if specified.

  • Ensuring there are systems in place for employees to disclose and impart the necessary knowledge about any inventions and how they work.

  • Ensuring that records are kept and internal policies are complied with in the creation of Copyright works, so authorship and dates of creation can be ascertained.

  • Specifying when works that are created are owned by the employer, for example:

    • Using the employer's materials

    • Relating to the employer's business

    • During specified work hours

 

Acknowledgement:

  • Making sure the employee acknowledges they have no claim over any intellectual property rights or revenue generated as a result of the employees creation of intellectual property works during the time of employment.

​

As well as:

  • Existing material: if any works created rely on existing material.

  • Further actions: the employee will commence any actions necessary to protect intellectual property material and vest such protections in the employer or any other third party nominated by the employer.

  • Moral rights: the employee waives all moral rights in any jurisdiction and agrees not to assert them in any jurisdiction.

  • Third Party Intellectual Property Rights: the employee will not infringe on any third party rights throughout the employment to the best of their knowledge.

  • Survival of provisions: these IP clauses remain in full effect following the termination or cessation of this agreement.

 

Note: these are not contract clauses. If you need assistance preparing or assessing your IP employment needs, get in contact with our team here.

​

Employees

If you are being employed in a role that deals with intellectual property in any capacity, you should understand your rights as set out by an employment contract.

 

You should look at what obligations and rights your contract set out, and the time period these obligations and rights are in effect for.

 

Ownership:

  • Your contract may set out that as a result of your employment your employer owns the intellectual property you create. Figuring out when this applies is important to understanding your rights and obligations. Some examples of application may be if the clauses are specified to apply to works created using any employer resources, in your work hours or relating to your employer's business.

Rights:

  • Most contracts will be set out that employees have no rights to any material created throughout the employment and agree not to assert any rights they may have over this material.

  • If you are creating material you may want to later use, it is important to negotiate with your employer the longevity of these clauses. You should also look out for a "survival of provisions" clause, as this asserts the employer's rights even after the employment/agreement is terminated or has ceased.
     

Obligations:

  • Your employment agree may set out the records that need to be kept of the creation and authorship of any intellectual property.

  • If you are creating inventions, it may set out your obligations in communicating to your employer how inventions work and all the necessary know-how.

  • These may also be subject to a "survival of provisions" clause, in which case you will be required to fulfill these obligations even after your employment has ended.

​

Other clauses:

  • Acknowledgement: your agreement may set out that you have no right to any revenue generated as a result of the use of your works by the employer, and you cannot challenge them their ownership of this material at any time. This means your employer has unrestricted access to use and generate income from your works. If you want to retain all/a proportion of the rights to your works and the revenue stream they generate, it is worth negotiating this with your employer before you sign any agreements.

  • Further actions: this often involves the employee taking all necessary steps to protect the intellectual property of a business and vesting those protections in the business or a nominated third party.

  • Existing material: any existing material you use in relation to the IP you generate for your employer. This will often involve the employer gaining a licence to use this material.

  • Moral rights: moral rights are personal rights not associated with the formal ownership of any works. Moral rights include having your work attributed to you, the right to object to treatment of the work that harms your reputation, and the right not to have a work falsely attributed to someone else. These rights can all be waived by contract.

  • Third Party Intellectual Property Rights: this clause means you agree not to knowingly infringe on a third party's intellectual property rights. This equates to using another party's material as your own or incorporating it into your work for your employer. Third party rights to intellectual property can be derived from registration, legislation and the common law.

Resources

bottom of page