Introduction: This morning we are interviewing Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.
Interviewer: The National Law Review recently published an article titled “Patent Ownership in Germany: Employers v Employees.” Why should our listeners be interested in German patent law?
Patent Attorney: First let me remind everyone that I am only licensed to practice before the United States Patent and Trademark Office, and I am only licensed to practice law in the state of Colorado. That disclaimer aside, this article makes some good points that inventors here in the United States should also be aware of. The article starts of explaining that “The requirements of Germany’s Act on Employees’ Inventions (ArbEG), which governs how employees’ inventions are assigned to their employers, may be unknown by international companies with employees in Germany.”
Interviewer: So if I’m not an international company with employees in Germany, should I stop the video?
Patent Attorney: Not at all. While there is no uniform law in the United States governing assignment of inventions, that is, each state has its own law, any inventor who is also an employee should be aware that their company may require that they assign over rights in any invention they make to their employer.
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.
Interviewer: Should inventors take their ideas to the company they are working for?
Patent Attorney: Many companies have procedures in place for evaluating intellectual property internally. Sometimes the company may release rights to an invention if it has no value to the company.
Interviewer: So even if I am required to assign my invention to my employer, they might let me keep it?
Patent Attorney: Every company is going to have their own policy, but it’s certainly a possibility.
Interviewer: Any other tips?
Patent Attorney: Check the Employee Handbook, the company intra-net, and any other materials the company may have given you to determine if there is a procedure in place for dealing with intellectual property. If there is, determine whether you are required to assign over rights to you invention.
Interviewer: So even if I’m required to sign over some types of inventions to my employer, I may not be required to assign over other types of inventions?
Patent Attorney: That’s right. An employer may have no interest in your invention if it is unrelated to the business of the employer. Or an inventor’s position with a company may not require that they assign over rights to their invention.
Interviewer: And I suppose you’re going to say to talk to a patent attorney for specific advice?
Patent Attorney: Of course – the law governing assignment of ownership rights in inventions is going to depend on the specific circumstances, whether there is a written agreement, and the laws may even vary by state.
Interviewer: Thank you, I think that’s all we have time for today.
