Posts tagged employee

Universities must clarify ownership of inventions in staff contracts

Where an academic staff member at a university has a eureka moment and produces a fascinating and helpful invention, who holds the rights to that invention – the staff member or the university?

Contrary to my post below regarding copyright, an employee-employer relationship does not result in a presumption that the employer holds rights to the invention.  The applicable rules in Canada were summarized in Techform Products v. Wolda:

  • the federal statute on patents says that an inventor is the first owner of their inventions, but it says nothing about what happens when the inventor is an employee being paid to do research related to those inventions;
  • the mere existence of an employment relationship does not disqualify employees from patenting inventions made during the course of their employment, even where (1) the invention relates to an aspect of the employer’s business, (2) the employee used the employer’s time and materials to bring his or her invention to completion, and (3) the employee has allowed the employer to use the invention while he or she was employed;
  • the two exceptions to the presumption favouring employees are (1) a contract that says the opposite, and (2) where the inventor was employed for the purpose of inventing; and
  • to define the true nature of an employee-employer relationship, the court will usually look at a series of factors, including whether the employee at the time of hiring had previously made inventions, whether the employer had incentive plans encouraging product development, whether the conduct of the employee once the invention was created suggested ownership was held by the employer, and so on.

A recent decision in Australia, which has rules on this issue that are similar to those in Canada, shows how these principles are applied in the university context.  In University of Western Australia v. Gray, the university claimed that it owned the inventions of the head of the Department of Surgery, Gray, who disagreed.  Gray had never explicitly assigned the rights to his inventions.  The university maintained that Gray had implicitly assigned his rights by virtue of the nature of his position.  The Federal Court of Australia sided with Gray and found he had no “duty to invent”.

The key for universities to avoid this mess: have each staff member explicitly assign his or her rights as inventors.  Put it in writing.

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The Duty to Accommodate: Happy to work on Christmas, but not on Yom Kippur

The culture of Christmas in Canada is pervasive.  It is the highlight of the year for many Canadians, when work ceases for a day and families reunite.  Every provincial government has designated it as a statutory holiday, allowing Western Christians the ability to participate fully in their religious experience without any expectation of professional achievement.

But, for many Canadians, the most important days on the calendar don’t fall out in late December.  They don’t coincide with statutory holidays.  How should educational institutions – as employers of people of varied religious and cultural backgrounds – deal with employees who don’t mind working on Christmas but need to take off days at different times of year for their own religious holidays?

The main case on this issue is Commission scolaire régionale de Chambly v. Bergevin.  Three Jewish teachers employed by a local school board took a day off to celebrate Yom Kippur.  The school board had granted them a leave of absence without pay and the teacher’s union sought reimbursement for that amount.  The Supreme Court of Canada ultimately found for the union, and maintained that the school board had a duty to accommodate the needs of the teachers, short of such accommodation resulting in undue hardship (i.e. being unreasonably costly) for the school board.

The court acknowledged that the calendar of statutory holidays is discriminatory against non-Western Christian employees:

In my view, the calendar which sets out the work schedule, one of the most important conditions of employment, is discriminatory in its effect.  Teachers who belong to most of the Christian religions do not have to take any days off for religious purposes, since the Christian holy days of Christmas and Good Friday are specifically provided for in the calendar.  Yet, members of the Jewish religion must take a day off work in order to celebrate Yom Kippur.  It thus inevitably follows that the effect of the calendar is different for Jewish teachers.  They, as a result of their religious beliefs, must take a day off work while the majority of their colleagues have their religious holy days recognized as holidays from work.  In the absence of some accommodation by their employer the Jewish teachers must lose a day’s pay to observe their holy day.

It’s as simple as this: one group doesn’t have to work on their holidays, the other does.  That’s discriminatory.  The court held that this issue has to be resolved without adverse consequences to non-Western Christian employees.  Logistically and legally, this is often dealt with by scheduling changes.

Educational institutions should review Chambly and similar decisions when drafting policies relating to employees and holidays to ensure that this issue is dealt with in advance with sensitivity to non-Christian groups.

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