Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

Intellectual Property

Singapore Small Flag Singapore

Copyright – Generally, the person who created the work (i.e. the author) owns the copyright in the work. However, there are exceptions to this general rule. Some exceptions are:

Employment: If the work is created by an employee pursuant to the terms of his employment, the employer owns the copyright in the work.

Special situation for newspaper/magazine/periodical employees: Where an employee of a newspaper, magazine or periodical creates a literary, dramatic or artistic work pursuant to the terms of his employment and for the purpose of publication in a newspaper, magazine or periodical, the proprietor of the newspaper, magazine or periodical owns the copyright in respect of publication in or reproduction for the purpose of publication in any newspaper, magazine or periodical. The employee owns the remaining rights that make up the copyright bundle of exclusive rights.

Commissioning: If a portrait/photograph/engraving is commissioned by another party, the commissioner owns the copyright in the work. If the portrait/photograph/engraving is required for a particular purpose, this purpose must be communicated to the commissioned party. While the commissioner is the copyright owner, the commissioned party has the right to stop others from doing any act comprised in the copyright, unless such act is done for the particular purpose for which the portrait/photograph/engraving is created.

For other types of commissioned works: Ownership belongs to the commissioned party, unless the commissioner and commissioned party otherwise agree.

Registered designs – The designer of the design. If the rights are created in the course of employment or under a commission, then the employer or commissioning party will own the rights in question.

Geographical indications – N.A.

Layout-designs (topographies) of integrated circuits – Where the layout-design is not created in pursuance of a commission or in the course of employment, the creator of a layout-design is the owner. Where the layout-design is created in pursuance of a commission, the person who commissioned the layout-design is the owner. Where the layout-design is not created in pursuance of a commission but is created by an employee in the course of his employment, the employer is the owner.

Patents – The inventor(s). However, if the rights are created in the course of employment (i.e. normal duties of the employee or specifically assigned to him or has a special obligation to further employer's interests), the employer would be the owner of the invention. Where an invention is created in pursuance of a commission without more, the owner of the invention would be the inventor rather than the commissioning party.

Plant varieties – The breeder of the plant variety. Where the plant variety was bred, or discovered and developed, by the employee, the employer would be the breeder and thus owner. If instead pursuant to a commission without more, the breeder would be the person who bred the plant variety rather than the commissioning party.

Trade marks – The authorised user of the mark in relation to the particular goods or services, or the party that has the bona fide intention to use the mark in relation to the particular goods or services, in the course of trade.

Trade secrets/know-how – The creator of the rights in question. The employer and commissioning party would have no automatic ownership over the rights.

France Small Flag France

Patents

The inventor or his successor in title (IPC art. L.611-6).

However, if the invention is made by an employee in connection with his employment contract involving an inventive mission, the right to the patent belongs to the employer (IPC art. L.611-7 section 1).

The invention made by an employee in connection with his employment contract without inventive mission can be assigned to the employer should the invention falls within the employer field of activity or if the employee used technical means and knowledge provided by the employee.

For any other invention, the right to the patent belongs to the employee (IPC art. L.611-7 section 2).

Trademarks

The applicant (IPC art. L.712-1).

Plant varieties

The applicant (IPC art. L.623-4).

Semiconductors

The creator or his successor in title (IPC art. L.622-3).

Designs

The creator or his successor in title (IPC art. L.511-9).

Copyright

The author of the work who is deemed to be the person under whose name the work has been disclosed (IPC art. L.113-1).

Databases

The producer of the database (IPC art. L.342-1).

Software created by an employee

The employer (IPC art. L.113-9).

Portugal Small Flag Portugal

R: Usually, the owner(s) is/are the applicant(s). In what Regards to patents, utility models, topographies of semiconductor products and designs developed under an employment agreement (or similar) the right to register belongs to the company.

India Small Flag India

Patents:
The inventor or its assignee are the first owner(s) of the patent rights.

Unless, there is a formal employment agreement to this effect, all rights arising out of an invention vests with the employee inventor and an employer has to execute an assignment with the employee to acquire rights to an invention.

Trade marks; Collective Marks and Certification Marks:
Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. As per the Trade Marks law, the Applicant/registered proprietor of a Trade mark; Collective Mark or Certification Mark shall be considered the owner of the Trade mark; Collective Mark or Certification Mark.

Domain name:
The legal owner of a domain name is the person and/or organization listed as the domain’s registrant or owner contact.

Copyright:
The author of a work is the owner of copyright therein.

In case the author is employed by newspaper, magazine etc. under a contract of service, the proprietor will be the first owner in the absence of an agreement to the contrary in the case of a literary, dramatic or artistic work.

Where a photograph is taken, or a painting or portrait drawn for a valuable consideration at the instance of person, such person is the first owner.

Where any address or speech is delivered in public, the person delivering is the first owner and where it is delivered on behalf of another person such other person is the first owner.

In case of Government work, Government shall be the first owner and in case of work made or published by or under any public undertaking, it shall be the first owner.

Designs:
The Applicant/registered proprietor of a Design shall be considered the owner of the Design.

Greece Small Flag Greece

In the case of patents, utility models and registered design rights, inventions created by an employee, in the course of an employment contract, belong to the employee who is, of course, free to assign its rights via an assignment contract. However, when the invention is the object of an R&D employment contract, the employer is the initial owner vest with full rights. If the invention is created during an employment contract with means, resources and information provided by the employer (dependent invention), 40% of the patent rights belong to the employer and 60% to the employee. The employer has a priority right to exploit the invention against compensation to the employee - inventor, which should be proportional to the economic value of the invention and the profits it brings to the employer.

  • In the case of semiconductor topography rights, the employer is the first owner of the rights, both in case of work made for hire and employee contract.
  • For copyright, as a general rule, the employee is the initial owner of both proprietary and moral rights but proprietary rights over copyright created in the course of an employment contract are automatically assigned to the employer, unless otherwise agreed. Moral rights subsist with the employee, although in practice such rights will be extremely limited. Automatic assignment will not extend to forms of exploitation which were unknown at the time of creation of the relevant work.

For work made for hire, the contractor will also be the initial owner, but its rights in and to the work shall pass on to the client, as a matter of contractual assignment. The contractor will still retain moral rights, although in practice such rights will be extremely limited.

Japan Small Flag Japan

Previously, for patents, utility model rights and design rights, the right to obtain the intellectual property rights created by an employee in the course of employment was held by the employee without exception, and the employer only had a non-exclusive licence of the right. However, the Patent Act, the Utility Model Act and the Design Act (amended in May 2015) have made it possible for employers to reserve, from the outset, the right to obtain the IP rights in employee inventions if they so provide in employment contracts, work rules, or any other stipulations in advance.

Copyright in a work created by an employee in the course of employment vests in the employer unless otherwise stipulated by contract, work rules, or similar instruments.

Mexico Small Flag Mexico

Inventions

IP right

First owner?


Different for rights created in the course of
employment or under a commission?

Patents

Inventor

According to article 14 of the Industrial Property Law, the
provisions of the Mexican Labour Law (mainly: article 163),
shall be applied when it comes to inventions made by a
person subject to an employment relationship.

Therefore, under the scope of article 163 of the Mexican
Labour Law, the ownership of a given invention is subject
to the following rules: (i) in any case, the inventor shall
be identified as the author of the relevant invention; (ii)
if the services provided by the employee are related to
research activities, the invention’s ownership as well as
the exploitation right shall be held by the employer; and
(iii) if nothing is agreed between the parties, the
ownership of the invention will be held by the inventor,
but the employer shall have a preferential right –in equal circumstances- to obtain the ownership
as well as the exclusive right to use the relevant
invention.

Utility models

Inventor

Industrial designs

Inventor

Integrated circuits

Inventor

Brands

IP right

First owner?


Different for rights created in the course of
employment or under a commission?

Trademarks

Applicant

If the trademark / trade name / slogan was created during
the course of employment of under commission then the owner
will be the employer.

Trade names

Applicant

Slogans

Applicant

Appellations of Origin

The Mexican Government

N/A

Copyright and other rights

IP right

First owner?


Different for rights created in the course of
employment or under a commission?

Copyright

Author

Article 84 of the Federal Law on Copyright (FLC) provides
that in case of a work made in the course of an employment
relationship (under a written individual employment
contract), the rules that should be applied concerning the
ownership of rights are the following:

a) If there is an intellectual property clause, the same
should be complied.

Some individual employment contracts include an
intellectual property clause, in which the employer states
that the copyright of works created by employees will
completely belong to the employer.

b) If there is no clause or agreement about the ownership
of a copyright, the FLC provides that the rights will be
owned by both the employer and the employee (50% each).

Furthermore, only the employer is entitled to disclose the
work without the employee´s authorization.

c) If there is not a written contract, the ownership of
rights will belong to the employee.

On the other hand, when it comes to Commissions, unless
agreed otherwise, the natural person or legal entity, which
commissions a party to create a given work, shall have the
ownership of the exploitation rights. If there is not a
written contract, the ownership of rights will belong to
the employee.

Related rights: artist, performers and executors

Artist, performers and executors

No, they are not different.

Related rights: book publishers

Book publishers

No, they are not different.

Related rights: phonogram producers

Phonogram producers

No, they are not different.

Related rights: video producers

Video producers

No, they are not different.

Related rights: broadcasting organizations

Broadcasting organizations

No, they are not different.

Reservation of rights

Applicant

If the reservation of rights was created during the course
of employment of under commission then the owner will be
the employer.

Plant varieties

Applicant

If the reservation of rights was created during the course
of employment of under commission then the owner will be
the employer.

China Small Flag China

Generally, the creator is the first owner of the relevant IP rights. However, the default position is that employers are the first owner of patents (unless specified otherwise) and copyright works created in the course of employment provided they were created primarily using the employer's resources as part of the employee's normal duties.

The first owner of inventions/works created under commission is the entity/person who created it, unless the contract for commission states otherwise. The first owner of trademarks is the first to file an application at the China Trademark Office (CTMO).

United Kingdom Small Flag United Kingdom

In general, the first owner of an intellectual property right is the inventor, designer or author who created the work.

If the work was created by an employee in the course of the employee's employment, the employer is usually the first owner of the right, unless the work was created outside of the normal duties of the employee's employment (in which case the employee remains the owner).

If a work is created under a commission, the first owner is the inventor, designer or author, unless the parties have agreed otherwise.

The first owner of a registered trade mark is the named applicant.

South Africa Small Flag South Africa

Patents

An inventor is the first owner of a patent right. South African patent law does not specifically provide for an automatic transfer of patent rights to an employer in the case of an employee who made the invention in the course and scope of their employment. Where no written contract of employment exists or where the contract of employment does not deal expressly with this question, the common law applies. Although the law on this point is not very clear, under certain circumstances the common law may provide that the employer is entitled to the beneficial ownership of the employee's invention.

However, an employer is prevented from including provisions in an employment contract which require transfer of patent rights in respect of an invention not made in the course and scope of their employment and for an invention made one year after the termination of the employment contract.

Designs

An author is the first owner of a design right. The regulations of the Designs Act provides that, only the proprietor of a design may apply for the registration of the design, the proprietor being:

  1. the author of the design;
  2. where the author of the design executes the work for another person, the other person for whom the work is so executed;
  3. where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person; or
  4. where the ownership in the design has passed to any other person, such other person.

Furthermore, an employer is prevented from including provisions in an employment contract which require transfer of design rights in respect of a design not made in the course and scope of their employment and for a design made one year after the termination of the employment contract.

Plant Breeders’ Rights

The breeder. Yes. The Act defines a breeder as follows:

“'breeder' in relation to a variety referred to in section 2, means-

(a) the person who bred, or discovered and developed, the variety;

(b) the employer of the person referred to in paragraph (a), if that person is an employee whose duties are such that the variety was bred, or discovered and developed, in the performance of such duties; or

(c) the successor in title of the person referred to in paragraph (a) or the employer referred to in paragraph (b);”

Trade Marks

The owner of a registered trade mark is the proprietor as recorded on the trade marks register. The owner of a common law trade mark is the person or entity which uses the trade mark to the extent that it is exclusively associated with that person or entity.

Copyright

The author of a work is the owner of the copyright, or in the case of a work of joint authorship, the co-authors of the work.

Where a literary or artistic work is made by an author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, and is so made for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall be the owner of the copyright in the work in so far as the copyright relates to publication of the work in any newspaper, magazine or similar periodical or to reproduction of the work for the purpose of it being so published.

Where a person commissions the taking of a photograph, the painting or drawing of a portrait, the making of a gravure, the making of a cinematograph film or the making of a sound recording and pays or agrees to pay for it in money or money’s worth, and the work is made in pursuance of that commission, such person shall be the owner of any copyright subsisting therein.

Where a work is made in the course of the author’s employment by another person under a contract of service or apprenticeship, that other person shall be the owner of any copyright
subsisting in the work.

UAE Small Flag UAE

Generally, the creator is the first owner of each of the relevant IP rights, with copyright being a particular exception to this.

The default position is that employers and commissioners are the first owner of patents, designs and utility certificates (unless otherwise agreed). UAE law allows for additional compensation to be paid to the inventor(s)/creators(s) if the economic value of the patent/design/utility model is greater than expected.

Copyrights vests in the author of the work until, or unless, the copyright is assigned in writing. This is also the case for employee created rights, or commissioned works. Ownership of copyrights in collective works vests in the director of the creation of the work. Moral rights rest with the author of the works and cannot be waived. It is possible for an author to agree not to exercise moral rights.

Neighbouring rights may be owned by performers in their performances, producers of sound recordings in their first recording of such sounds/performances, and broadcasting organizations in their broadcasts of programs and recordings.

The owner of a trade mark is the person who obtains the registration of the mark in the UAE, though in certain circumstances this can be challenged through prior use or international rights.

Plant variety and plant breeder rights belong to the person who bred, discovered or developed the new plant variety.

Updated: June 27, 2017