Table of Contents

Business Innovation and the Law

Business Innovation and the Law

Perspectives from Intellectual Property, Labour, Competition and Corporate Law

Edited by Marilyn Pittard, Ann L. Monotti and John Duns

Business Innovation and the Law analyses the topical issue of protecting and promoting business research and development. It does so by examining business innovation through the lens of different legal disciplines – intellectual property, labour and employment laws, competition and corporate laws.

Chapter 12: US employment law perspectives on the issue of who owns an employee’s invention

Richard Bales

Subjects: law - academic, competition and antitrust law, corporate law and governance, intellectual property law, labour, employment law

Extract

United States patent law gives an inventor a property right in his or her invention even if the invention was conceived during the inventor’s employment. A patent may be obtained only by its inventor, and ‘inventor’ status has nothing to do with employment. Being an inventor’s employer does not give that employer any direct interest in (or priority with respect to) potential patent rights. However, state contract law may, under certain circumstances, require the inventor to assign the patent to the employer upon issuance. An employer may acquire either the entire patent or property right, or a right to use the invention, in any of three ways. First, the employer is entitled to ownership of the invention when the employee expressly agrees to assign his or her rights to the employer. Second, the employer generally is entitled to ownership of the invention when it has hired the employee for the express purpose of inventing. Third, the employer receives an irrevocable, but non-exclusive and non-assignable, right to use the invention if the invention was developed during working hours with the use of the employer’s equipment and materials. This chapter will describe American law governing employee inventions and will compare it to the law of several other countries. As described above, an inventor owns his or her invention absent a legal doctrine requiring the transfer of all or part of the ownership rights to the inventor’s employer. The three such doctrines are described below. One way that an employer may acquire ownership of an employee’s invention

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