Category: Agreements

  • Does my employer own my invention?

    Inventors often want to know if their employer owns their invention. If the employee has an employment agreement that requires the employee to assign all rights in any inventions related to their employment to their employer, then the answer is usually fairly straightforward and simple.

    There are also certain circumstances where an employer may have rights to an invention of an employee even without an employment agreement. For example, if an employer is “hired to invent” (such as a software architect might be hired to develop new software), or the employee uses the employer’s time and other resources to develop the invention (such as using the employer’s computer to write that software code). An employer may also have a “shop right” in an employee’s invention, which gives the employer a right to use the employees invention if the invention is so closely related to the employer’s line of business.

    You also need to be careful of not competing with your employer, and if you are moonlighting – not letting it interfere with your ability to work for your employer.

    This is all very general information, because it depends on the specific facts and circumstances of the invention, and the employer-employee relation. Ownership rights may also be governed in part by state law, which varies from state to state. But it is wise to check if there are any agreements with the employer, and what those agreements say.

    And regardless of whether there is an invention agreement, employees should not do any personal inventing during the time an employee is being paid to work for the employer. It is also wise not to use an employer’s resources, or compete with an employer.

    Inventors should always tell their patent attorney right away whether there may be any potential ownership issues related to their invention. It is better to sort out these issues early on.

  • Independent contractor agreements

    Startups and small businesses often hire independent contractors instead of employees. Independent contractors are great for project-based work, because you don’t have to pay a salary, benefits, and payroll taxes. But there are a lot of pitfalls you need to consider before hiring an independent contractor. This article only addresses some of the intellectual property issues you might want to consider.

    Any agreements with independent contractors should be entered into prior to their commencing work as important rights may otherwise be affected. Note that you must provide “fresh” consideration (i.e., a payment) if you are going to require independent contractors to execute this agreement after they have commenced work.

    An independent contractor agreement should include a well-defined description of their scope of work. Your company may not have any rights in work conducted outside of this scope of work.

    An independent contractor agreement should also include provisions to protect confidential information that independent contractors working for your company may develop or otherwise come into contact with.

    In addition, an independent contractor agreement should cover ownership of any intellectual property that is developed by the independent contractor. Intellectual property rights include inventions (patents) and works of authorship (copyrights). There are many factors to consider with regard to copyright ownership. It is generally preferable to employ as employees those who will be engaged in developing copyrightable material of any significance to the company.

    There may be other issues that you also want to address in an independent contractor scenario. For example, you may want to include a covenant not to compete. You may also want to include an arbitration clause should a dispute arise, an indemnification clause to protect your company against liability of the acts of the independent contractor, and/or address various employment and independent contractor issues.

    As with any agreement, an independent contractor agreement includes obligations that you will owe to the contracting party, in addition to obligations of the independent contractor. Therefore, it is important that you carefully read and understand the agreement in its entirety before entering into any independent contractor agreement. If you do not understand a provision, or if you have any questions or concerns, contact a business attorney before entering into an independent contractor agreement.