Patents, Intellectual Property, and the Law

Patents can only be conferred by the federal Patent Office, not by any state, but once the patent has been issued the rights to the patent are decided under state law. In many cases, an employer will obtain from an employee (or, in other cases, from an independent contractor who has been hired to work on a project that results in the issuance of a patent) an agreement to assign any patents developed while working on the employer's business. Those kinds of agreements, although strictly interpreted and applied, generally are enforceable. Even in the absence of an explicit agreement to that effect, the employer still may compel the employee to transfer the patent to the employer if the employee was hired to work on the project from which the invention resulted.

The rules pertaining to employee inventions are not limited to patents, but apply to other kinds of intangible property or rights that the law refers to as "intellectual property." In one case, for example, university professors devised a process for producing milk by introducing beneficial bacteria. Later, milk produced using this process was sold under a certain trademark that the university owned and licensed to dairies. The university declined to pay royalties to the professors who claimed to be the inventors of the process that led to the trademark, so the professors brought suit against the university. The court concluded that the trademark belonged to the university, as the professors' employer, and that there was no obligation on the part of the university to pay royalties to the professors who invented the process. Importantly, the court found that the professors, when they were conducting the research that led to the invention or development of the trademarked process, were doing precisely what they had been hired to do.

For Employers: Legal Help with Employee Inventions

If you are an employer with questions about your legal rights or obligations in connection with an employee's invention, you may wish to discuss the matter with an experienced employment lawyer. Especially if the possibility of a dispute over legal rights to the invention exists, having an experienced attorney on your side will be an invaluable asset.