QUESTION

How do I know if I'm breaking a company ownership of intellectual property law?

Asked on Jan 22nd, 2013 on Patents - Massachusetts
More details to this question:
I have worked as an auto technician for nearly a decade. I have a great idea for a patent. I recently came across the following in the company HR manual (below). The idea I have was generated completely on my own. I have not utilized any company resources (or time) whatsoever associated with my work. In your opinion, am I able to proceed without risk of forfeiture, if I am able to patent my work? Thanks.All employees had to sign off recently via an online form that the acknowledge the following:Company owns all inventions, discoveries, ideas, trade secrets, and original works of authorship that an associate conceives or develops either alone or jointly with others during the course of employment or using Company resources. As an associate, you agree to help the Company document their ownership of this intellectual property, which includes: (i) promptly and completely communicating to management your conception or development of its intellectual property; (ii) maintaining current and appropriate notes, sketches, and other records thereof; (iii) assigning to company all right, title, and interest in such intellectual property; and (iv) performing all acts and, on request, executing all necessary and appropriate documents to enable company to obtain all right, title, and interest in and to such intellectual property and whatever other legal protection company deems appropriate.Company has the sole right to determine the terms and conditions of any disposition of its intellectual property, which may be made with or without monetary compensation, and you have no right to share in any monetary compensation or other receipts resulting from the intellectual property.
Report Abuse

3 ANSWERS

Licensing Attorney serving Portland, OR at Mark S. Hubert PC
Update Your Profile
I would file for the patent yourself and not inform them if you think it will cause a problem. Clearly they have no rights.
Answered on Jan 30th, 2013 at 8:20 PM

Report Abuse
IP Portfolio Attorney serving San Diego, CA at Intelink Law Group, PC
Update Your Profile
I think the first thing to do in answering this question is to phrase the question correctly. It is not breaking a company ownership of intellectual property law that is the issue. It is whether the employer for whom you work has a claim of ownership of the invention you would like to patent. That you came up with the invention on your own and did not use any company resources or company time to develop it bodes well for you. So long as the invention is outside the scope of your employer's business, your employer should have no claim of ownership of your invention. If your invention is something within the scope of your employer's business, then it becomes a very factual issue. Without knowing more about what your employer's business is and the scope of your role as an auto technician, it is not possible to determine definitively whether or not your employer's ownership rights would be triggered. Even if your employer's ownership rights are triggered, you can negotiate an arrangement with your employer if your invention is not within their strategic objectives to develop through a license or even a transfer of ownership from the company to you. That would settle the issue definitively in an amicable way even if there are conflicting claims.
Answered on Jan 30th, 2013 at 8:20 PM

Report Abuse
Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
Update Your Profile
According to the Agreement you signed - "Company owns all inventions, discoveries, ideas, trade secrets, and original works of authorship that an associate conceives or develops either alone or jointly with others during the course of employment..." That means the company claims ownership of ANYTHING you invent while you work for them.
Answered on Jan 28th, 2013 at 5:31 PM

Report Abuse

Ask a Lawyer

Consumers can use this platform to pose legal questions to real lawyers and receive free insights.

Participating legal professionals get the opportunity to speak directly with people who may need their services, as well as enhance their standing in the Lawyers.com community.

0 out of 150 characters