Managing the Legal Nexus Between Intellectual Property and Employees

Managing the Legal Nexus Between Intellectual Property and Employees

Domestic and Global Contexts

Elgar Law and Entrepreneurship series

Edited by Lynda J. Oswald and Marisa Anne Pagnattaro

The explosion in intellectual capital coincides with a growing understanding of the importance of human capital to the firm. This book examines the pressing legal issues that arise at the intersections of intellectual property law, employment law, and global trade, such as the use of employment contracts to protect intellectual property, ownership of intellectual property created by the employee, officer liability issues relating to infringement, post-employment confidentiality and non-compete agreements, and inadvertent or deliberate misappropriation or theft of trade secrets.

Chapter 2: Employee-created health care innovation at a crossroads

Julie Manning Magid

Subjects: business and management, international business, law - academic, intellectual property law, international economic law, trade law, labour, employment law


In early 2012, Dr. Joseph Grocela, an urologist employed by Massachusetts General Hospital (MGH), invented a device for voice training that helps a musician harmonize and a singer to sing notes with more tonal precision. Another use of the same device is to enable mute patients, such as people who have had a laryngectomy (a surgical removal of the larynx or voice box) to phonate. Dr. Grocela conceived of the “voice box invention” outside the hospital, on his own time, at his own expense, and the device is unrelated to the practice of urology. However, MGH and its corporate parent, Partners HealthCare System, claimed ownership over the invention because Dr. Grocela signed an intellectual property agreement with the hospital that included an assignment of future inventions. The court ruled the intellectual property agreement valid as to Dr. Grocela’s voice box invention despite the lack of connection between the invention and Dr. Grocela’s specialty or the use of any hospital resources. The court reasoned that the free sharing of staff inventions benefited the patient population served by MGH and that Dr. Grocela received adequate compensation from the hospital and reaped the rewards of clinical resources, office space, access to patients and “professional prestige. Understanding innovation and, in particular, what motivates innovation in health care is increasingly important. Companies in the United States employing engineers and scientists require them, nearly universally, to assign their inventions to their employer.

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