1

Someone is working for a company where the "standard" policy, where all inventions made (during the time period, using what equipment, etc.) can be claimed by the company, applies...
When that employee creates new inventions for the company that are patent-able, can the employee apply for the patent under his name? How is this done and how does the company's rights come into play?

I am asking this because I know of a few instances where an employee has patents on his designs/inventions that were made for the company they work for and was wondering how it all works when all inventions are supposed to belong to the company.

2

There is a distinction between being the inventor, and being the assignee (aka owner) of the patent or patent application.

In the US, anyone who made a material contribution to at least one claim, must be recognized as an inventor. If no assignee is specified, the inventor is the presumed applicant/assignee.

In practice, employment agreements will contain a clause that the employee agrees to assign his/her inventions to the company (i.e is obligated to assign). In most cases, a separate assignment agreement is then later recorded with reference to the patent application or patent. In the US, if the employment agreement contains the phrase "and hereby assigns" (with the appropriate context), the employment agreement itself can serve as a valid and enforceable assignment agreement.

  • "In the US, anyone who made a material contribution to at least one claim, must be recognized as an inventor." what does this statement mean? if i designed part of an invention, then I must be recognized as such on the patent?? – agent provocateur Oct 15 '15 at 16:24
  • Yes, if you contributed to an essential element or variant of the invention, that is present in the claims, then you are most likely an inventor. However, if you only did lab work or manufacturing design following directions, or making obvious design modifications based on known methods, then you are most likely not an inventor. – Halfdan Faber Oct 15 '15 at 20:28
0

If an employee developed the invention on employer's time and/or using his resources she must assign the invention to her employer. If she did it on her own time that's different. Yes, some employments agreement requires employees claim employers' ownership of all IP developed by employee during her employment, but they may not be enforceable in some states, which have different laws on the book. Look up your state law statutes regarding IP rights.

  • My question specifically asks about intentions that the employee created for the company they work for. I also state that we are considering the case where the employee has already signed off on assigning the inventions to the company. Your answer does not seem to answer the question. – agent provocateur Jan 22 '16 at 21:11

Your Answer

By clicking "Post Your Answer", you acknowledge that you have read our updated terms of service, privacy policy and cookie policy, and that your continued use of the website is subject to these policies.

Not the answer you're looking for? Browse other questions tagged or ask your own question.