INTERODUCTION

As India’s participation in global trade, including with countries with strict patent regimes,
increases, the need of aligning patent policies and practices in India with global standards is
being felt.

If we look globally, and particularly at the competitive needs of global groupings (ASEAN, TPP
etc.) and countries with strict patent laws like US, Germany, UK etc., there is a call for a relook
at the ownership rights of employees and employer. The stress of ‘Make in India’ on IPR further
shows its future prospects, and thereby, need of policies more in line with the international
standard.

As per WIPO website for most countries,’ if an employee has developed an invention in
execution of his/her employment contract – i.e. usually during his/her working time within the
enterprise – the invention (and the related patent rights) will belong to the enterprise’.

Under the Copyright Act, for major economies with minor modifications, “work made for hire”
is the work done by an employee within the scope of employment and the employer has right
over it. In case of an independent contractor, the employer will not have any rights over the
work. So, it is better for the employer to enter into an agreement to have claims over the
intellectual property rights.

The “scope of employment” limitation means that the employer is only entitled to rights over the
works that the employee produces under the scope of the employer. For example, if you are a
fashion designer by day and a song writer by night, your employer is entitled to rights of your
designs but not your songs.

Unless there is a written agreement with independent contractors, hired to produce written
content, designs, logos, etc. to addresses the issue in their case, contractors will own their
creations even if a company paid the contractor to produce the copyrighted work.

Here’s a list of the nine types of work done by independent contractors that can be considered
work-for-hire:

 a contribution to a collective work;

  a part of a motion picture or other audiovisual work;
 a translation;
 a supplementary work;
 a compilation;
 an instructional text;
 a test;
 answer material for a test; or
 an atlas

For work not falling into one of the nine work-for-hire categories mentioned above, some or all
of the rights must be explicitly assigned by a copyright to the company through an agreement.
And for these nine work-for-hire categories the contractors own their creations as mentioned
before.