Employer Rights To Employees' Inventions
What rights does an inventor have in a patent?
Inventors own their patent rights until they transfer (assign) them to someone else. However, employers may require employee inventors to assign their patents.
Who owns a patent when there are multiple inventors?
Each inventor is a part owner. Unless the inventors have otherwise agreed, each is free to use the invention without interference from the others. Therefore, each inventor can make, use, sell, license, or assign the invention independently. Therefore, if an employer wants complete control over an invention, the employer should arrange for all employees who have worked on an invention to assign their rights to the employer.
How does an employer gain ownership of employees' inventions?
No law requires an employee to assign an invention to an employer. However, employers can ensure their ownership through several types of agreement. In an invention-assignment agreement, a company requires an employee to sign over all work-related inventions. (Several states prohibit employers from requiring employees to sign over inventions conceived outside of work, however.) These agreements may be part of an initial employment agreement, or can be made contemporaneously or later. If such an agreement is made after an employee is hired, the employer must offer some "consideration," or valuable benefit other than continued employment, to the employee. For example, employees could be offered stock options in exchange for such an agreement.
If an employee was hired to invent for a company, that employee will likely be obligated to assign invention rights to the employer. The fact that the employee was hired to invent should be documented in case a dispute arises. However, a written agreement is the best insurance.
If an employee is asked to solve a problem, called "set to experimenting," he will probably be obligated to assign invention rights to the employer. As with hiring to invent, the directive to the employee should be documented in writing before the employee begins experimenting.
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