LAWCHEK®
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Personal Legal Sourcebooks
"LAWCHEK® Intellectual Property"
This is not a substitute for legal advice. An attorney must be consulted. "This
work is protected under the copyright laws of the United States. No
reproduction, use, or disclosure of this work shall be |
Does the employer or the employee own it? |
Ownership
laws with regard to employee-created intellectual property can be simple
or complicated, depending upon the type of intellectual property
involved and the facts of the particular situation.
Patent.
Under U.S. patent law, patent rights initially belong to the
individual inventor(s), even if the inventor is an employee and the
invention came about as a result of employment.
35 U.S.C. § 152.
If the invention is created by more than one person, the patent
rights are owned by undivided joint ownership unless there is an
agreement to the contrary.
Unless a separate basis for employer ownership exists, patent
rights are owned by the employee inventors.
The most common basis for an employer to claim ownership is
through a written assignment.
Employers desiring patent rights should require employees to sign
employment agreements with an invention assignment clause as a condition
of employment. After an
invention is created, employers should require employees to assign the
particular invention in writing to the employer.
Absent a written assignment, employers can obtain patent rights
in one of two ways. If the
employer can prove in court that the employee was hired to invent,
then an implied assignment to the employer may arise.
Otherwise, if the invention was developed using the employer's
resources and on the employer's time, the employer obtains a "shop
right.” A shop right
is a right to make and use the invention without paying royalty, but is
non-exclusive and unassignable. That is, the shop right cannot be used by the employer to
prevent others from making and using the invention.
Trademark.
Unless there is a written agreement to the contrary, the employer
normally owns trademark and service mark rights associated with a
product or service, regardless of employee involvement in the selection
or use of the mark.
Copyright.
Under the copyright law, copyright in a work initially vests in
the author or authors of the work.
17 U.S.C § 201(a).
If the work is created by more than one author, the copyright
rights are owned by undivided joint ownership, unless there is an
agreement to the contrary.
However, in the case of a "work made for hire," the
employer for whom the work was prepared is considered the author of the
work. A
work that is prepared by an employee within the scope of his or her
employment is considered a work made for hire. 17
U.S.C §201(b).
Certain other works specially ordered or commissioned may be
considered works made for hire, but generally nonemployee authors own
copyrights in their works until expressly assigned.
Trade
Secret.
Unless there is an agreement to the contrary, the employer
normally owns the rights of trade secret. |
This is not a substitute for legal
advice. An
attorney must be consulted.
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