QUESTION
When it comes to "Invention Assignment Agreements" that your employer makes you sign, how enforceable are they if you invented on your own time/money?
Asked on Jun 23rd, 2011 on Intellectual Property - Texas
More details to this question:
I'm starting a new job, and my employer is going to ask me to sign an "Invention Assignment Agreement". I can see this agreement being worded one of two ways:
[Good] "If you invent something on COMPANY time, with COMPANY funds or COMPANY equipment, it belongs to the COMPANY."
[Bad] "Anything you invent or build, whether using company resources OR YOUR OWN, belongs to the company."
I haven't seen the agreement itself yet, and I of course plan to look over it in detail, but if it DOES contain terms similar to the second item above, and given that the Company is in California and I'm a citizen of Texas (telecommute), can that clause be enforced if I can prove that I built my "invention" on my own time, with my own money and equipment?
Thank you!
1 ANSWER
You should wait to see the agreement before asking this type of question. Mostly likely, the agreement will correspond to neither of your "two ways."
However, as a general rule, the company has the right to require you, as a condition of employment, to assign the rights to anything you invent that falls within the scope of your employment (whether or not you do it on your own time) and anything that you invent on company time using company resources.
If you invent something that is outside of the scope of your employment by the company on your own time, generally, it would not belong to the company, while If you invent something that is outside of the scope of your employment, but you do so on company time and/or using company resources, it is possible that the company might only obtain a royalty free license to practice the invention, rather than ownership.
Please remember that these are only generalities and the specific facts of a specific situation may produce a different result.
Answered on Oct 04th, 2011 at 1:57 PM