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A hypothetical: let's say I am employed in the U.S., and in a field where I am compensated for the results of my ideas or intellectual work, i.e. engineering.

Let's say I have a roughly standard employment agreement and NDA with common stipulations, such as:

I further acknowledge that all inventions, original works of authorship, developments, concepts, know-how, improvements or trade secrets which are made by me within the scope of and during the period of my Relationship with the Company are "works made for hire" [...]

This clause makes a lot of sense and protects the company and their shareholders from questions regarding who owns what -- they company pays me to come up with stuff, and they own it! Great.

Let's say that in addition to engineering (or whatever), I write a nonfiction book about investing in commercial real estate. Can I secure an original work of authorship, as in a copyright, because it is out of scope?

What about extending that to a patent? If I come up with an original process for effectively fermenting kombucha, what are the ramifications of filing a provisional patent assigning the rights to myself?

Are there clear criterion for what is "in-scope" and "out-of-scope"?

For clarity, the jurisdiction is U.S./Nevada.

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  • The state is critical. States where a lot of technology is created (i.e. California) have significant law on this topic including making some agreements of this type unenforceable if not done correctly.
    – George White
    Jul 21, 2020 at 22:01
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    By the way, there is no such thing as a provisional patent. There are only provisional applications. Provisional applications never become patents, only non-provisional applications can become patents.
    – Eric S
    Jul 22, 2020 at 1:09

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It is not clear, until the parties make it clear, though individual states may have partially answered the question. There may be a requirement for the business to clearly delimit what they are laying claim to. So if there are clauses exempting works created by the employee wholely on their own time, not using company property including confidential trade secrets, which in not directly related to the company's business including anticipated developments, then that clearly delimits what the company can claim. An expression like "in the course of employment with the company" is vague and could refer to "during that time period" or to "as a result of". If the intent is "during that time period", then you should say it that way, and perhaps the candidate will decide to not take the position. Since the company gets to write the contract, the courts will interpret ambiguous language against the interest of the contract's author.

If the contract is written differently for copyright versus patents, then patents could be handled differently. The main difference between patents vs. copyright is that patents are more valuable, so the company has a stronger incentive to snag all patents, but this is not a function of the law.

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    The copyright to a successful song or book is much more valuable to many patents that are impractical and never commercialized.
    – George White
    Jul 21, 2020 at 21:56

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