In the case of improvement ideas of a technology such as computer mouse, can or would an organization make the claim that the inventor could not have perfected or conceived the idea if they did not work for the organization? If at all possible, I would like to know the relevant citations and if the responder is an attorney please.

Let's say in performance of my job, I would have to site content online relevant to how computer mouse operates. Would an organization make a claim and how effective would such an argument be? What is the impact of content you review online while at work within the context of patent litigation? I feel employees are paid to perform a job while at work. I also feel organizations should not exploit individuals and prevent innovation by taking away the financial incentive of a novel idea. How can an inventor provide excellent service and not give up his/her dream of creating a better way, innovate? What about organizations which provide literature / books ? Can they later claim effectively that employer used that content to develop the solution? Even if the content was reviewed at home during time which was not at employer's paid time?

What are some of considerations the inventor would have to make during the pre-employment process re: the type of content in their contract and during the employment process if they want to protect their right to the invention? I read some content online that employment contracts were negotiable, but a recent experience was very different despite some of the ridiculous content of the contract one being that they would pay minimum wage if employee departs without a two week notice and the employer can not collect from the client. How are confidentiality clauses related to patents and inventions? Can an organization successfully argue and sue an inventor for sharing the details of an invention that "belonged" to the organization? What is considered infringement within the context of technology patents? I am throwing in everything I have heard of.

1 Answer 1


Absent an employment agreement, generally employee inventions remain the property of the employee. Employment agreements often automatically assign any inventions to the employer, even if you work at a gas station much less at a high tech company. Almost all employment agreements these days have some section that deals with automatic assignment. Many of these employment agreements may attempt to reach beyond what a court is willing to enforce, so careful review with your attorney of any employment agreement is necessary to determine the likely scope.

Even if you are not forced to assign a patent application to your employer, it doesn't mean all is free-and-clear. For instance, if you conceive of an invention that uses confidential information of your employer, it may be very difficult to later assert that patent against that employer or its customers. The closer the patent application is to your normal duties at your job and the more it is related to confidential information, the more difficult it will be to retain that patent and enforce against your employer. A court may also find an implied license if you are in a position to steer your employer to using your patented technology and then later sue. (See Shop Rights, here: http://www.nolo.com/legal-encyclopedia/who-owns-patent-rights-employer-inventor.html)

Using employer provided equipment to create your invention will also make it harder to retain your ownership and most employment agreements specifically call out use of employer equipment including networks (don't use the free wifi at work to do your research). Courts are very likely to uphold an automatic assignment where an employee used employer equipment. Your question asked about books and I am not aware of any case on-point about employer-provided knowledge where the knowledge is not confidential, however I would suspect that courts would not be willing to force assignment of a patent solely because the inventor used non-confidential knowledge gained from the employer to create the invention.

If you are truly working independently from any of your employer's confidential information without any use of employer resources, it will likely be difficult for an employer to force an assignment. The one additional factor is how much your invention will compete with your employer. There may be a non-compete clause that can change how much scope you have to monetize your patent and holding a patent that is adverse to your employer and/or employer's customers may create a right to fire you and possibly make monetary claims.

There are a number of overlapping considerations, so it is difficult to answer in the abstract. I strongly advise that you contact an attorney to discuss this matter if you feel there is a significant amount of money at stake.

One other word of caution: do not ask your employer's IP attorneys for their opinion. As attorney's for your employer, they have an ethical obligation to look out for their client's best interest and to not share any confidential information. If you ask them to opine on whether your idea would be swept up in a employment agreement assignment clause, you are no longer acting on behalf of the company and instead are acting on behalf of yourself. They cannot answer you other than to say that the IP belongs to the company, and they will probably not share their thoughts or legal reasoning with you because it is their client's confidential information. This can get sticky when there is a long-running attorney-client relationship between the individuals that doesn't exist once the question is about the employee's personal rights instead of the company. You are much better off with your own attorney reviewing your employment agreement and applicable law.

  • How much of a technology can I use? I mean the Internet Protocol is a ubiquitous technology. If I write a software to add functionality to a network transport protocol, can and employer claim that I worked for them as an IP engineer and they have the right to the patent. Even if I have notes to prove I came up with the idea solely and I used my own time to do this? What happened to promote of arts and sciences?
    – maverick
    Aug 8, 2016 at 20:01
  • How is all this impacted if I develop something after I leave an employer and perhaps work for myself? As you may agree, some employers make a habit of targeting potential PhD candidates in an effort to exploit them in later years. Has anyone ever made such a claim? Has it been successfully argued?
    – maverick
    Aug 8, 2016 at 20:05
  • The two key touchstones are how close what you are doing is related to confidential information you learned from your employer. Public information, like the TCP/IP protocol, aren't confidential, so think carefully about how closely related the thing you are working on is to the thing your employer paid you to work on. There is no answer in the abstract that can pin this down, so you should talk to an attorney with your specific details if the value of the project warrants it.
    – David
    Aug 12, 2016 at 21:07
  • Claims against you are much weaker after you have left the employ, however using confidential information you learned while you were employed is still going to cause problems. The new federal Trade Secrets act addresses these types of scenarios to some extent: congress.gov/bill/114th-congress/senate-bill/1890/text You still may not have all the detail you need without consulting an attorney. If I have answered your question, could you please mark my entry as the answer? Thanks.
    – David
    Aug 12, 2016 at 21:09
  • I have never dealt with confidential information. I appreciate your answers. I will certainly review the links you shared. My challenge seems to be the current employment paperwork. Please correct me if I am wrong; most of them seem to have an invention clause of some sort. Even if the position is not for a research and development activity. What I need more info on, I greatly appreciate your help if you can add anything else, is would I be safe working at a technical job if I work on an idea at home using publicly available technology?
    – maverick
    Aug 15, 2016 at 13:14

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