Intellectual Property Office Of Singapore

IP Starter
Inventors Creators And Owners

The question that often arises when IP is discussed is "Who owns it?"

IP, being an intangible asset, derives from and is inextricably intertwined with the creator or inventor, and the knowledge that he carries in his head. Hence companies should be aware of the complexities in dealing with such intangible assets. If the employee walks out the door, and the IP was insufficiently protected, this could affect a company's IP strategies.

In general, Singapore's IP laws provide that the creators/inventors will own the IP, unless there are specific terms in the law or in contractual agreements that say otherwise.

Exceptions to the general " you created it you own it " rule is when the work was done in the course of employment or when it was a commissioned work.

Employment: If the IP was created in the course of employment or under the terms of employment, the IP would belong to the employer, unless there was an agreement which states otherwise.

There can be grey areas in determining what is "in the course of employment", including the following :
  • was the IP created in the normal course of duties for which the employee was hired?
  • were employer's resources used to create the IP?
  • was the IP created during working hours?
Commissioning: If someone had commissioned a work to be done (for example paid a fee for a photograph, or a drawing of a portrait) then generally, the commissioner would own the work. But do note this important point - if the work was intended for a specific purpose, it must be communicated to the person being commissioned to do the work. He/she is entitled to prevent the owner from using the work for any other purpose apart from the specific purpose.

Companies could consider:
  • Clearly defining and stating the company's IP policy and processes including:
    • reinforcement of company's ownership of IP 
    • company's policies pertaining to different scenarios resulting in development of IP (e.g. if created outside of company time and company resources were not used) 
    • processes for employee disclosure of new IP development 
    • roles and responsibilities of employees, managers and legal counsel 
    • policies relating to contract work or work with external parties
  • Identifying the positions that may lead to IP development and incorporating such work clearly into job descriptions.
  • Establishing a reward system for employees. Many IP-savvy companies put in place a reward system as motivation for employees and a reinforcement of their contribution to the company. This could be pegged to the revenue generated from the invention or creation (I.e. from licensing fees or royalties). Other systems companies have utilised include a reward or recognition for disclosure of IP, additional rewards or increased quantum as the IP progresses through the company IP approval process, with a final incentive if the IP is patented and subsequently exploited.
The above section paints only general scenarios.

The defining line for "who owns what" is seldom that clear. What happens, for instance, if some resources were shared between organisations to develop the IP? What if the IP was developed based on background IP not owned by your company?


Foreground & Background IP

Background and foreground IP might sound like legal terms but are merely used to define IP that exists before the development (background IP) and the IP that is subsequently generated (foreground IP). If your company intends to embark on a project that is likely to result in new IP, and the project is based on the proprietary background IP of others, you might face issues of infringement of the background IP. Your foreground IP might be so interlinked with the background IP that you cannot divorce it completely and work it independently.

Ensure that your IP advisor is aware of all the IP being brought into a project, who owns what, and what your IP is based on.

Joint Ownership

Some may think the solution to collaborations resulting in jointly developed IP is joint ownership. Be aware that joint ownership brings about its own complexities.
Joint ownership generally means that two or more parties hold similar rights concurrently. Note that the definition of joint ownership might differ in different countries. Also, in Singapore, joint ownership means different things for different IP.

  1. Patents: Each co-owner can use/work the patent for his benefit without seeking the consent of the other co-owners. However the consent of all co-owners is required for the grant of a licence, assignment or mortgage of a share of a patent.
  2. Registered Design: Each co-owner can do any act set out as the exclusive right of an owner of a registered design without the consent of the other co-owners, However the consent of all co-owners is required for the grant of a licence or the assignment of any interest in a registered design.
  3. Trade Marks: Each co-owner can do any act for his own benefit set out as the exclusive rights of a registered trade mark owner without the consent of the other. However the consent of all co-owners is required for the grant of a licence, assignment or charge of a share of a registered trade mark.
  4. Copyright: Each co-owner must obtain the consent of all the other co-owners to do any act that is the right of a copyright owner.
The Responsibility Of Ownership

Of course the main benefit of IP ownership is retaining exclusivity; you have the ultimate right to decide how the IP is to be used and who can use it. But remember owners also must be responsible for:
  • ensuring sufficient protection including applying for the rights, payment of fees, etc.
  • monitoring the use of the IP internally; for example keeping track of proper use of trade marks by company employees, ensuring proper security measures are in place, etc.
  • actively enforce ownership rights against unauthorised use.
  • defend the validity of the IP when challenged; for example if someone were to claim that your patent was not novel.
  • ensure that there are sufficient returns to offset the costs of protecting and enforcing the IP.
At times you may decide that it is not worth actively pursuing and registering your ownership of an IP. That is a decision you have to make based on your company's strategies and plans for growth.
   
Top Last updated on 29 Aug 2007



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