Legal Question in Intellectual Property in California
I signed an intellectual property agreement with my employer that states that they own right to ALL my inventions including patents, copyrights, etc. I'm in sales and marketing and not involved in research. My employer doesn't have an R&D department and I know of no patents filed in their name, just trademarks and some software IP. If I have an invention or file a patent that has nothing to do with the business of my employer or contemplated business, can I be forced to assign my patent over to them?
3 Answers from Attorneys
The answer is it depends. There are a number of factors can play into whether the company will own your work. Some of the factors that will be used, along with the agreement you just signed, are what sort of information and/or tools were used or needed to create the patentable or copyrightable material you just created. I have handle these kinds of situations before and I would need to review the documents that you have signed before I can give you an answer on what your rights are.
Feel free to contact my office.
Jim Betinol
Attorney, Partner
Withrow and Betinol Law
(t) (424) 229-2560
Disclaimer: This communication does not create an attorney-client relationship and such a relationship can only be formed through a signed written agreement. This communication is not legal advice and should not be solely relied upon in making your legal decisions. Any situation depends on many different facts and specific laws that require an in-depth legal consultation to evaluate the best solution for your needs.
What part of the word 'ALL' don't you understand? If you contracted for ALL, that is what they own. They pay your salary to work full time and design for THEM, not you. That is the norm in business. Anything you design would be subject to their claim or 'right'. You could contest such claim, and defend their lawsuit if necessary using whatever legal arguments available. If you wanted to keep some things separated, you should have done so, or should now re-negotiate if possible. If you now want to hire counsel to help you in this, feel free to contact me.
The other attorneys are right on point here. Unless there is some loophole in the agreement you signed, your options are limited. First, a careful review of what you signed is necessary. Next, and assuming the review does not produce anything positive, you might approach your employer and see if they will amend or clarify the agreement that it has nothing to do with inventions you conceive while not working on their dime that have nothing to do with their business. Consult with a good business attorney in your area for specific advice.
Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise
Franchise Attorney
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