Managers responsible for ensuring that an organisation's intellectual property rights are protected often believe that the organisation automatically owns all intellectual property rights arising from the work of its employees. The reality is a little more complicated, and the position can vary between different countries and between different forms of intellectual property.
Some countries have legislation which provides for a broad presumption of ownership by employers of intellectual property rights arising from work in the course of employment. However, this is not the case in the UAE, where the position varies as between forms of intellectual property. For this reason, it would be prudent for employers operating in the UAE to thoroughly consider these issues and put in place mechanisms such as policy manuals, standard clauses in employment contracts and assignment documents to ensure their proper ownership and protection of intellectual property rights created by their employees.
Intellectual property rights broadly cover trademarks,
copyright, designs, patents and know-how. Rights that are related
to these traditional rights include geographical indications,
integrated circuits, and plant varieties. Depending on the nature
of the business of the organisation, different types of rights may
be more relevant than others. Pharmaceutical companies can be
expected to be most concerned with trademarks and patent rights,
whilst software companies are likely to be most concerned with
copyright. Although there is a different focus on the type of
intellectual property rights among different organisations, it can
be said that intellectual property rights arise from work in most
organisations, subsisting in original or inventive work and efforts
of an organisation's employees and independent
The UAE patent law provides for a right on the part of the employer to apply for a patent for an invention made in the course of employment by an employee or commissioned, unless otherwise provided in the employment contract. The employee inventor is, however, entitled to compensation for the assignment and additional compensation if the economic value is more than anticipated when the contract was signed. In cases where the employee produces an invention outside his scope of employment, but relevant to his employer's trade, the employer has an option over the entitlement to a patent within a specific time from when the employee notifies him of the same. The above provisions also apply to industrial designs.
Thus, UAE patent legislation assists employers by providing for a presumption of ownership insofar as patents and designs are concerned. Thus, even if the employment contract is silent, the employer may rely on provisions such as the above to claim ownership over these rights.
Under UAE copyright law, in contrast, there is no principle that an employer automatically owns the copyright in his employee's work, even if the work was created within his scope of employment and using the employer's resources. The employer may request for assignment of copyright in the works created, but there is a limitation on assignment of works created in future. The UAE copyright law recognises the concept of "collective work" which could benefit employers. A collective work is described as a work created by co-authors under the direction of a natural person or corporate entity where the director ultimately publishes the work under his or its name. It could be said that the corporate entity employer is the director of the collective work which oversaw its creation and thus has the exclusive moral and economic rights in the work, unless agreed otherwise. This will obviously depend upon the circumstances.
The UAE patent law also deals with "know-how", providing that unauthorised use, disclosure or circulation of any element of know-how by a person who knew or did not know by negligence of its confidential nature shall constitute illegal activity. This is in addition to any contractual obligation which might be binding on an employee or contractor in respect of the use and/or disclosure of confidential information. However, to be eligible for protection, the possessor of the know-how must have taken positive steps to safeguard the secrecy of the elements of know-how.
Even in particularly inventive industries, inventions and novel
designs are not typically created on a daily basis. Usually, work
that is created more frequently is work in which copyright
subsists, such as booklets, articles, any form of literature,
computer software, audio and visual works, works involving
drawings, etching and the like, charts, maps, plans and
photographic works. It is also the case that most if not all
confidential information, like trade secrets and know-how, is
recorded in whole or substantial part in some form, typically in a
digital format if not in hard copies. Where such information is
recorded in material form, copyright is also likely to subsist as a
Based on the current UAE legislative framework, employers may be able to rely on statutory provisions to claim patent and design rights over inventions and designs but may find it difficult to rely on statutory provisions – without more – to claim copyright in works created by their employees in the course of employment. Employers should ensure that there are policies in place which are properly notified to,and understood by employees. Policies, however, may not always be enforceable, and thus it is prudent for employers to take steps to support such policies with terms in employment contracts which protect the employer as far as possible given the current UAE IP-laws. Without such safeguards, employees who leave their employment could claim that works created by them during their employment belong to them, giving them the right to use and exploit such works potentially to the detriment of the employer.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.