their invention unless there is a written agreement in place that as-signs
or transfers the ownership of the invention to the employer.
Where there is no provision that provides for the transfer of own-ership,
courts will look at the employee’s duties under the contract,
and if there is a duty to create that specific invention, the employ-er
is deemed to own same. This is often referred to as the “hired
to invent” rule.
When determining whether an employee was “hired to invent”
the courts will look at several factors, such as whether the em-ployee
was hired to invent that specific invention, whether the
employer was dealing with the employer’s confidential informa-tion,
or whether it was a term of the employment agreement that
the employer could not benefit from the invention. It is important
to note that this is a grey area that is mainly fact driven. Conduct
of the employers and employees are often taken into account,
along with language in the employment agreement.
With intellectual property being such a valuable asset, em-ployers
should be familiar with the laws that govern ownership
and, at a minimum, should have all employment agreements care-fully
drafted with such ownership rules in mind. Employment
agreements should identify the intellectual property as specifical-ly
as possible, contemplate past and future intellectual property,
and explicitly state which party retains ownership of such intel-lectual
property to adequately avoid ownership disputes down
the road. n
Donya Vahidi practices corporate commercial, intellectual property,
technology and entertainment law at Boughton Law.
WITH MORE PEOPLE WORKING FROM HOME, IT
BECOMES MORE DIFFICULT TO DETERMINE WHAT
IS CREATED IN THE COURSE OF EMPLOYMENT,
AND WHAT IS CREATED WITH THE EMPLOYEE’S
OWN RESOURCES OR DURING THEIR OWN TIME.
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