If I Invent Something While Working for a Company, Does the Company Own Any Patent That I Obtain on the Invention?

Generally, an inventor retains all patent rights to her invention.  But that rule may not apply if the invention was discovered while the inventor was “on the clock” for her employer.    

If you are an employee – not an independent contractor – and your invention was created as part of your job, then it is likely that your employer owns the rights to that invention and any patent obtained on it.  This is known as the “work for hire” doctrine. 

If the scope of your work involves inventing or designing, you will generally have entered into a written agreement with your employer regarding the ownership of any intellectual property created while on the job.  This written agreement usually covers any patents, copyrights, and other forms of intellectual property, and its terms govern in the case of a dispute.  Examine this agreement carefully to see what rights you may have, and consider consulting a patent litigation attorney.

On the other hand, if your invention falls outside the scope of your usual work and you do not have such a written agreement, you may be able to assert intellectual property rights in the patent even if you invented it while at work.  This means that you would own the patent and have the right to enforce the patent against any infringer.

Note, however, that if your employer uses your patented invention, it may have a defense against your claims of infringement for that use.  The “shop rights” doctrine provides that your employer can use an invention that you own but invented on company time without infringing your patent.  But this right is limited:  your employer cannot sell, assign, or use the patented invention outside the scope of its business.

To learn more about intellectual property rights and litigation, go to www.mololamken.com and follow us on LinkedIn.  “Brilliant lawyers with courtroom savvy” – Benchmark Litigation.  Copyright MoloLamken LLP 2021.