Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3
Interviewer: Really, so even though I’m not being paid to develop products for my employer, if I do, my employer may own the invention?
Patent Attorney: It’s going to depend on the circumstances. For example, inventors should check whether they signed an Employment Agreement with their employer. If so, they should carefully read the terms and conditions, particularly any intellectual property provisions. Often, the Employment Agreement will state what types of inventions must be assigned over to the company. Examples might include anything developed using company property or developed on the company clock. But many Employment Agreements go further than this. It is best to have a patent attorney review the Employment Agreement and give specific advice.
Interviewer: What if I didn’t sign an Employment Agreement?
Patent Attorney: There are other circumstances in which an inventor may have to sign over rights to their invention to a company they work for. For example, the inventor may have an independent contractor or other agreement with the company they work for, which includes intellectual property provisions similar to those we just discussed for the Employment Agreement. Or the inventor may have a fiduciary duty to the company, for example, if the inventor sits on the board or is a major investor in a company.
Interviewer: So practically speaking, how does this affect the typical individual inventor?
Patent Attorney: It’s common to get ideas when you’re at work, or as a result of work you are doing. Often, the inventor believes that because the idea was their own, that they should own any patent or other intellectual property rights to that invention. But before paying a patent attorney to prepare and file a patent application, inventors should first make sure that they don’t have any prior obligations which might require the invention be assigned over to the company they are working for.
For Part 3 o 3, Follow This Link: Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3