1

I have signed assignment of inventions with my employer. The exact wordings is not available to me - however I remember vaguely that it dealt with all inventions by employees being company's property.

My question is if I invent a system or develop a product in my spare time (outside office hours) and using my own personal resources (laptop, devices, personal time and effort etc...) will that still be in danger of being attacked by assignment of inventions? Can I safely assume that such property will fully be mine?

(I am asking because I remember reading in a reputed book - Business Law for Entrepreneurs) that any invention/developed product can be claimed by employer even if it is produced outside normal hours of employment with personal resources - Since it is done during the term period of employment.

I would love see someone shed light on this aspect since the above sounds too draconian.

  • This will depend strongly on the exact wording of the employment agreement. An assignment of inventions/developments "in the course of employment" and one "during the period of employment" are very different. The former excludes spare-time work not related to the job. The laws of the specific jurisdiction will also be important. Some jurisdictions limit what sorts of agreement are enforceable. Many employers do not claim unrelated spare-time inventions. Some do. In some places that is enforceable, and not in others. – David Siegel May 6 at 18:23
  • @DavidSiegel The document was signed in GA. I am not in immediate possession of the document, so don’t know the details. – Ace May 9 at 16:33
  • You should ask for a copy of the agreement. There is no reason for them not to provide it. – Eric Shain May 10 at 15:59
3

The answer will depend upon the state law that is applicable, assuming you are in the U.S. Patent law is federal law but patents and patent applications are considered personal property, like a car, and the ownership and transfer of that property is governed by state law. The terms you imagine are in your agreement are too draconian in California, for example. Please get a copy of what you signed and edit your question to include key points and indicate your state.

  • This answer is not true, because it could still apply in CA based on what the invention is and if the company's ideas were used to make it. – Putvi May 6 at 18:41
  • @George White This document was signed in GA – Ace May 9 at 16:34
-2

If you signed a contract saying that what you invent is the property of your employer, it is the theirs because you agreed to it.

However, absent the agreement what you make on your own time is yours, unless you were hired to invent the thing. https://corporate.findlaw.com/human-resources/who-owns-employee-inventions-the-employer-or-the-employee.html

  • The answer is not correct, at least in CA. An agreement that gives anything you invent to your employer no matter what is not enforceable there. What a contract says on its face may not alway be what governs. – George White May 6 at 18:14
  • I mean that's not what the article says. Do you have a link to the CA law? – Putvi May 6 at 18:18
  • 1
    CALIFORNIA CODES, LABOR CODE SECTION 2870-2872: 2870. (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall NOT apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either: – George White May 6 at 18:22
  • Yeah, that only covers things made outside work, which my answer covers. – Putvi May 6 at 18:23

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

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