Blog Details

Author - Associate Megha Motwani

Introduction

When a work is made as a work for hire, the employer or other person for whom the work is prepared is considered the author and unless the party expressly agreed otherwise in a written instrument signed by them owns all of the rights comprised in the copyright. Determining whether a work was work for hire can be complicated in certain circumstances. Thus, here one thing that is important to know is that the owner of an IP is not always the same person who created it. To ensure effective ownership of IP developed in India, it is imperative that the companies understand the legal and practical aspects.

Who Owns The IP At The First Instance

As for the matter of fact, the IP ownership in India varies under different IP laws. The below mentioned are the various IP laws that govern the ownership of IP rights in India:

 a. Copyrights: the general rule for copyright works is that the creator of the work called the author is the first owner of copyright i.e., the employee. This is set out in Section 17 of the Copyright Act, 1957. This position however can be altered by the author transferring copyright ownership to someone else. It is also called an assignment.

Patents: according to the Patent Act, 1970, an inventor will be the first owner. therefore, to get a patent registered in your name over a product or process developed by some other person there must be a written instrument specifying the terms and conditions as there is no automatic assignment in case of patents.

c. Designs: As regards assignment of designs, the Designs Act, 2000, mandates a procedure similar to patent assignments.

Exception

Employment: for works created by an employee in pursuance of their terms of employment copyright would be earned by the employer. There are two aspects to this

First: the person must be an employee and not an independent contractor.

Second: the work must be created in the pursuance of the terms of their employment.

This requires at the looking of the kinds of tasks that the person has been hired to perform. If the creation of the work falls within the general tasks and the person has worked on it at their place of employment and during normal work hours than the work will be owned by the employer. This exception can be altered by contractor, so, your first point of call should be to check whether anything is said about Intellectual Property in the employment contract.

Conclusion

For the employer to enjoy all the IP rights it must include a provision under the employment agreements which normally specify that “the employee hereby assigns to the Indian company or employer all inventions that the employee might develop or conceive during the period of employment”.