Who Owns Patents Created During the Course of Employment?
Often, we are called on to create things (intellectual property like copyrights or patents) during the course and scope of our employment. In fact, creating works may be our actual job—think of a songwriter, or someone who creates a jingle for a commercial or a comic book artist.
When these creative works are created, as a general rule, they are owned by the employer. That’s called the work for hire doctrine.
But what about patents? Unlike copyrights, which are creative works, patents are new or innovative inventions. Who owns a patent—employee or employer—when the patent is created as part of someone’s employment?
Factors to Determine Ownership
The law isn’t as clear cut as it is for copyrights, but it’s pretty close. There is no automatic rule that the employer owns the patents created by the employee. However, the employer does own the patents if:
- The employee was hired for the purpose of creating the patent, or creating patentable products or designs (even if there is no employment contract), or
- There is a contract between the employer and employee, giving the employer ownership. This may include confidentiality and nondisclosure agreements.
Most Employers Protect Themselves
In practice, one of these is likely to apply.
Many more sophisticated employers will require employees to sign contracts that preserve the employer’s rights to whatever employees may create that is patentable. And while a standard confidentiality agreement may provide some protection, it is best to have an agreement that specifically mentions patents, and which specifically says they belong to the employer.
When There is No Agreement
Yes, an employer doesn’t need any agreement of ownership, if the employee was hired for the purpose of creating the patent. In that instance, the law says that the employer only owns a patent created by the employee if the employee was specifically hired to work on or create the patented product.
Sometimes that’s obvious—imagine a scientist working at a lab that is developing a vaccine or medicine. That would clearly be owned by the employer. But other times, that’s not so obvious because employees can have dual roles, purposes, or jobs.
It also doesn’t matter where the invention was created—such as, if the employee were to create something in their basement at home. What matters is whether the task or assignment is one that the employee was specifically employed or hired to work on.
If the Employee Owns the Patent
If the employee was not specifically hired to create or invent the patented product, and there is no contract, then ownership becomes a complex legal issue.
Generally, in that case, the employee will own the patent but the employer maintains the legal right to use, and profit from, the patent. The employer need not compensate or pay the employee, for the use of the employee’s invention.
Questions about intellectual property being used by your business? Let the West Palm Beach commercial litigation lawyers at Pike & Lustig help you.
Sources:
findlaw.com/smallbusiness/intellectual-property/law-regarding-the-rights-to-inventions-made-by-employees.html#:~:text=In%20the%20context%20of%20patents,licensing%20it%20to%20other%20users.
store.legal.thomsonreuters.com/law-products/news-views/corporate-counsel/employer-and-employee-ownership-of-intellectual-property-not-as-easy-as-you-think
