Legal Question in Intellectual Property in Florida

Whether or not your friend's employer has any claim to the work your friend has performed on your project will depend largely on the terms of your friend's employment. Quite often, persons who work as engineers or designers for their employers will be subject to a contractual clause that entitles their employer to the intellectual property rights in any products they design that could be related to the employer's business. Such a provision would require some written agreement, wherein your friend would have agreed to the assignment of the rights to any products he developed. Such provisions normally do not apply to persons who are not employed specifically in the areas of design or new product development for their employers. Assembly line workers, for example, would not normally be restricted by such employment provisions.

Obtaining documentation from the employer indicating that he holds no claim to your friend's work is a good idea. You should probably have an attorney prepare that documentation to ensure that it is drafted in a way that best protect's your friend's rights, and your interests in the product he has been assisting you on.

You, and your friend, are the inventors of your product and therefore entitled to file an application for patent protection for your product. Whether your friend's firm may have any claim to an assignment of any patent rights will depend on the language of your friend�s Employment Agreement with his firm, as well as, the significance of your friend's contribution to the development of the product itself.

I recommend that you contact an Intellectual Property Attorney to review the terms of the employment agreement, to draft an intellectual property assignment Agreement and to file an application for patent registration with the U.S. Patent and Trademark Office (USPTO) to protect your invention.

Feel free to contact me (a Florida-licensed Intellectual Property Attorney) in our Atlanta office for additional details. (404.496.4119)

*Comments provided are not legal opinion and do not establish an Attorney-Client relationship.