Ownership laws with
regard to employee-created intellectual property
can be simple or complicated, depending upon the
type of intellectual property involved and the
facts of the particular situation.
Patent. Under
U.S. patent law, patent rights initially belong
to the individual inventor(s), even if the
inventor is an employee and the invention came
about as a result of employment. 35
U.S.C. § 152. If the invention is
created by more than one person, the patent
rights are owned by undivided joint ownership
unless there is an agreement to the contrary. Unless
a separate basis for employer ownership exists,
patent rights are owned by the employee
inventors.
The
most common basis for an employer to claim
ownership is through a written
assignment. Employers desiring
patent rights should require employees to sign
employment agreements with an invention
assignment clause as a condition of employment. After
an invention is created, employers should
require employees to assign the particular
invention in writing to the employer. Absent
a written assignment, employers can obtain
patent rights in one of two ways. If
the employer can prove in court that the
employee was hired to invent,
then an implied assignment to the employer may
arise. Otherwise, if the invention
was developed using the employer's resources and
on the employer's time, the employer obtains a "shop
right.” A shop right is a
right to make and use the invention without
paying royalty, but is non-exclusive and
unassignable. That is, the shop
right cannot be used by the employer to prevent
others from making and using the invention.
Trademark. Unless
there is a written agreement to the contrary,
the employer normally owns trademark and service
mark rights associated with a product or
service, regardless of employee involvement in
the selection or use of the mark.
Copyright. Under
the copyright law, copyright in a work initially
vests in the author or authors of the work. 17
U.S.C § 201(a). If the work is
created by more than one author, the copyright
rights are owned by undivided joint ownership,
unless there is an agreement to the contrary. However,
in the case of a "work made for hire," the
employer for whom the work was prepared is
considered the author of the work. A
work that is prepared by an employee within the
scope of his or her employment is considered a
work made for hire. 17 U.S.C
§201(b). Certain other works
specially ordered or commissioned may be
considered works made for hire, but generally
nonemployee authors own copyrights in their
works until expressly assigned.
Trade
Secret. Unless
there is an agreement to the contrary, the
employer normally owns the rights of trade
secret.
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