Inventing as an Employee – What to Know

By: Dan Pierron

Inventing is for many employees all in a day’s work, literally.  Very often, engineers, scientists, industrial designers, and many others are innovating new solutions to problems, and developing patentable inventions along the way.  While those individuals are the undisputed inventors of the invention, it is quite likely they are under a contractual obligation that does not leave them any ownership interest in their inventions.  Today, I’ll discuss likely scenarios for inventing employees, and what they can do to protect their independently-developed inventions.

Very often, as a term of employment, a company will require the employee to assign all their interests in intellectual property developed in the industry of the company, using company property, or as a part of the course of business of the company, to the company.  This is only sensible; it strikes contrary to notions of equity for a company to pay an inventor his salary, only to have to license the inventor’s patent that embodies the inventor’s work for the company.

However, being an employee of a company should not, and almost universally does not, give the company carte blanche claim to all inventive works of an employee.  Where an employee invents in an industry outside that of the company, using his own resources and tools in developing the invention, it is very difficult for the company to assert the arising intellectual property is rightly theirs.  Accordingly, it is important for an inventor to erect absolute barriers between their work as an employee and their own inventing.  Use your own facilities and equipment on your own time, so that there can be no confusion that this was your independent venture.

Often, it is not so easily determined as to whether an invention is outside the industry of the company.  An invention may have certain similarities to products offered by the company, but may yet have manifest differences.  In such situations, it is often a good idea to sit down with a representative of the company to discuss the matter.  It is likely better to sort out any question of ownership of intellectual property when as little capital, monetary or intellectual, has been expended in its development.

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