Generally, if you create patent-eligible products, including software, while at work or performing your duties as an employee, your employer owns the patent.
Under U.S. patent law, the original patent applicant is assumed to be the patent owner, unless there is an assignment of interest in the patent to another person or entity. The law is murkier when you create something as an employee, but with your own resources. The outcome may also be different depending on the state law that applies.
Employee pre-invention assignment agreements are key to protecting a company’s assets and research investments. Assignment agreements have become common, not only in engineering and computer science related work, but in any type of creative field.
Assignment agreements—do they always apply?
Let’s take a look at some different circumstances where assignment agreements may or may not apply.
- Hobbies and side projects: California is one of several states that have passed laws protecting employees’ intellectual property from their employers in certain circumstances. Many people have hobbies, side projects, or interests that are unrelated to their day job. For example, if you work as a software developer and invent a nondigital camping tool with your own time and resources, your employer does not own that invention. To protect yourself, keep good records of when, where and how your invention was created. Keep your work and personal project as separate as possible. Do not use an employer’s tools or information, or you risk litigation down the road.
- Students: The issue of intellectual property ownership also affects students. Educational institutions may consider inventions that a student develops as part of course-related projects and exercises as belonging to the student. For example, if a student invents a new algorithm as part of a computer science course assignment, the school may or may not own it. Because policies can vary, it is important to review a prospective institution’s rules and regulations prior to enrolling or committing to a program.
- Academic researchers: Patent eligible inventions that arise out of academic research activity are treated differently. If a student or faculty member invents something in the course of research, the university generally owns the rights to that intellectual property. Often, students and faculty must agree to a patent and copyright assignment agreement in order to participate in research or use school facilities.
- Universities: For universities, it is important to secure IP that results from significant investment and research resources. Some schools give students involved in research a choice between projects that require an assignment of IP rights, and those that do not. Pursuant to these agreements, if a patentable invention was first conceived or reduced to practice during the course of research, it should be disclosed and assigned to the school. Often, the assignment is automatic, e.g. when the agreement stipulates that the inventor “agrees to assign and hereby does assign” the rights to the invention. If the invention was not created during research, but was created using school resources, it can also fall under the scope of the assignment agreement.
Under California law, employee assignment agreements do not generally apply to inventions “that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information”, unless the invention relates to the employer’s business or R&D, or which result from any work performed by the employer. If the assignment agreement you signed before becoming an employee is broader than that, it may not be. Assignment agreements can sometimes be overly broad, so it is important for all parties to understand what is legal.
Contact our skilled intellectual property lawyers in California
For more information about protecting intellectual property, contact our knowledgeable California patent lawyers at TIPS Group today or call us at 888-818-5481.