Question

ill and Tony are friends who both work for Odul. Tony is in Odul’s marketing department and Jill is in the R&D software development team. Over a drink one weekend Jill and Tony discuss an idea for an improvement to an old ‘gameboy’ console that Jill had when she was a child. The console is no longer under patent protection and the company that manufactured the gameboy has, long since, ceased to trade.Jill writes a computer program that allows the console to be used by schools to teach young students how to write computer code. Tony suggests a trade mark "The Codee" for the newly altered console. The friends go ahead and make a prototype during their lunch hour. They decide to demonstrate it at the regional Science and Technology Exhibition to assess public interest in the Codee before applying for a patent.Unfortunately, Helen, the CEO of Odul attends the Exhibition and tells Jill and Tony that any rights in the Codee belong to Odul. In addition Helen says patent protection will not be possible for two reasons: firstly, the Codee has been on public display and is therefore not novel. Secondly, the Patents Act 2013 provides that computer programs, as such, are not patentable inventions.Is Helen correct? Discuss Helen’s claims and advise Jill and Tony of the legal situation.

Answer 1

Helen is potentially correct on both counts: the rights to the Codee may belong to Odul if Jill and Tony's employment contracts stipulate so, and patent protection could be unattainable if the Codee lacks novelty due to public display or if it is primarily a computer program. Jill and Tony should seek legal advice to understand their position better.

Step-by-step explanation:

Helen's claim that the rights in the Codee belong to Odul depends on the employment contracts of Jill and Tony and the policies of Odul regarding intellectual property created by employees. In many cases, an invention made by an employee during their employment and within the scope of their duties may indeed belong to the employer. Therefore, if developing such technology falls within Jill and Tony's job duties, or if they used company resources to create their prototype, Odul may have rights to the Codee.

Regarding the patentability of the Codee, Helen's assertion that public display has compromised its novelty is potentially correct. Patents typically require an invention to be novel and not previously disclosed publicly. Demonstrating the Codee at the exhibition could render it unpatentable if such disclosure is considered to be public. Moreover, under the Patents Act 2013, as Helen suggests, computer programs are generally not patentable, although the precise interpretation of 'as such' could allow some software-related inventions to be patented if they produce a 'technical effect' beyond the computer program itself.