“[56] The only contrast drawn by s.39 between one sort of duty and another is to be found in the alternatives ‘normal’ and ‘specifically assigned’. Unless the invention was made in the course of a duty falling within one or other description, which are in terms mutually exclusive, s.39(1) cannot apply and the invention will belong to the employee. It may be that there is a third category of duty, such as that adverted to by the Banks Committee in para.469 of their report (see [39] above), but it is unnecessary to decide the point because it is irrelevant. Further the emphasis is on a duty of the relevant description. The source of an employee's duty is primarily contractual, though some of the terms are implied by law, cf Patchett v Stirling (1955) 72 R.P.C.50, 56 and 58. But the contract evolves in the course of time such that, in my view, it is unsafe to have regard only to the terms contained in an initial written contract of employment. The actions of employee and employer in performance of the contract may give rise to an expansion or contraction of the duties initially undertaken by a continuous process of subtle variation. I do not think that any extra or different duties so undertaken should be regarded only as duties ‘specifically assigned’. It is quite possible for them, in the course of time, to have become ‘normal’. [57] The suggestion that what is ‘normal’ is to be ascertained by reference to some other standard such as ‘ordinary’, ‘day to day’ or ‘primary’ must also, in my view, be rejected. Parliament has chosen the word ‘normal’. It is not for the courts to substitute for that ordinary English word some other test which may or may not be quite the same. It is for the courts to apply the test selected by Parliament in accordance with its normal meaning. Thus I agree with Falconer J. in Harris' Patent [1985] R.P.C. 19, 28 that the cases decided before the enactment of s.39 can only be guidance in relation to the assessment of an employee's duties in the circumstances of that case. For my part I doubt if they are helpful in even that limited context. [58] It is not in doubt that the duties of an employee may evolve in the course of time, see Armstrong Whitworth Rolls Ltd v Mustard [1971] 1 A.E.R. 598 and Carmichael v National Power Plc [2000] I.R.L.R. 43, [33]. Accordingly, I agree with counsel for LIFFE at least to the extent of examining the judgment of Kitchin J. on this part of the case to see if he did pay sufficient regard to the possibility of the evolution of duties as normal over and above those set out in the initial contract of employment. …”
“[97] It is against that background that one comes to s.39(1). Both (a) and (b) focus on the employee's duties (‘normal’ or ‘specifically assigned’ for (a) and a ‘special obligation to further the interests of the employer’ for (b)). How then does one ascertain the nature of the employee's duties? ‘Duty’ is the language of obligation. As between the employer and employee the primary source of a duty are the terms of the contract. What is it that he is employed to do must be the key question. That is not the same thing as was suggested by Mr Tritton – what is his day-to-day work? Take for instance a research chemist working on a cancer cure for the last 10 years. Suppose he came up with a cure for arthritis. He could not seriously contend that he owned the invention because he was dayto-day working on a cancer cure. His duty as a research chemist is clearly wider than his day-to-day work. [98] On the other hand the contract cannot be sole arbiter of the duty. Otherwise employers would be able to include overbroad duties in contract terms and s.42(2) would not operate to make the contract unenforceable. As I have noted, that was specifically a matter of concern to the Banks Committee. Section 42(2) will have effect to deal with overstated duties. The ‘duties’ of s.39(1) are determined realistically. [99] Since one cannot go by the contract alone I do not think one can be too precise about how the duty is to be ascertained. The contract and the general nature of the job both call for examination. It is not possible to be too analytical about this. In the end one is asking whether the employee is employed to try to innovate and, if he is, what general sort of areas his innovation duties cover. It is here that I think Kitchin J. got too far into the detail of Dr Pinkava's day-today work, accepting that he was under a duty to innovate new types of future of a conventional kind but not other types of product which would be of commercial interest to LIFFE. [100] Clearly another factor relevant to the determination of duties is the extent to which the common law imposes a duty of confidence on the employee. Section 42(3) makes it clear that Parliament was not intending to abrogate this duty in relation to employee inventions. So if in the course of his work an employee comes up with an idea which the common law would require him to hold as confidential to his employer, that will be covered by s.39. Any other conclusion leads to the absurd result that an invention would belong to the employee and yet he would owe a duty of confidence to his employer. Parliament cannot have intended such a stalemate. It follows that to some extent at least, although s.39(1) is a complete code, it lets the common law back in via the concept of ‘duty’. [101] The section provides that the invention must be made ‘in the course’ of the employee’s duties. This clearly draws on the well-known common law concept of ‘in the course of employment’. The classic contrast is ‘a frolic of his own’. In practice once the duties are ascertained this requirement should cause little difficulty.”
“11. A system for applying network resource access policy, the system comprising: a filter configured to apply resource access policy to a request from a user agent for access to a remote network resource by redirecting the user agent to an authorization portal when denying the request for the remote network resource, the filter further configured to respond to an authorized request having an authorization token by storing authorization data at the user agent and redirecting user the agent [sic] to the requested network resource; and a policy server configured to determine resource access policy based on the request as provided by the filter and further based on any authorization data accompanying the request.”
“This letter is to confirm our offer of a position as a Senior Systems Engineer, reporting to Lou Erdelyi for pre-sales and post-sales support activities and to James Goruk for development activities; both of whom are based at Netsweeper Inc’s Guelph, Ontario headquarters. … We have discussed and you will sign our Non Disclosure, Non-Compete Agreement where Netsweeper Inc. owns all materials developed by you. … You will be provided the necessary tools of your job, including work station, or lap top if needed, and approved expenses.”
“In your role as Senior Systems Engineer, you will fill three central roles: • Development • Pre-sales support • Post-Sales and implementation support … Development As part of the development team, you will be responsible for the architecture, design and implementation and coding of key components and product capabilities for Netsweeper. This includes: • Intepreting and documenting product requirements in the Netsweeper wiki to create technical specifications for the work that will be performed. • Coding in accordance with the technical specifications • Resultant code should provide inline documentation and be easily understood by other peer-level developers • Resulting code should meet performance requirements • Resulting code should be of high quality; i.e. few but preferably no defects and every effort should be made to ensure that there are no design defects. • Assisting QA in identifying QA requirements in terms of test plans, scripts, test data, etc. • Assist the documentation function of Netsweeper; identifying the doc requirements, reviewing documentation once completed and provided input to improve document quality. • Performing ongoing maintenance programming to correct any identified product defects and to optimize performance. In addition to the above, bring all of your ideas to the product management function within Netsweeper so that we can build the best products possible.”
“AND WHEREAS Employee has agreed to transfer and assign to [Netsweeper] all of his right, title and interest in and to all inventions, improvements, ideas, developments and all suggestions in Canada and any other country relative to the Employer products and technologies ("Confidential Information") all on terms as set out herein and for consideration set out herein;”
“l. Employee hereby agrees that any discoveries, ideas and suggestions, improvements or inventions of any character coming within the scope of the business of [Netsweeper] made or developed by Employee shall be for the benefit of the Corporation and shall be considered to have been made as if Employee were [an] employee of [Netsweeper] and shall immediately become the property of [Netsweeper]. 2. Without limiting the generality of the foregoing Employee hereby transfers, sets over and assigns to [Netsweeper] his entire right, title and interest in and to any and all Trade marks, licenses and all inventions, improvements and discoveries in Canada and in any other country whatsoever and Employee hereby agrees to execute and deliver to [Netsweeper] any and all instruments and papers necessary or desirable to accomplish the assignment and transfer.”