Legal Question in Intellectual Property in Michigan

Assignment of Inventions in Employee Agreement
Given the following clause:

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Assignment of Inventions.

I agree that I will promptly make full written disclosure to the Company, will hold in trust for the sole right and benefit of the Company, and hereby assign to the Company, or its designee, all my right, title, and interest in and to any and all inventions, original works of authorship, developments, concepts, improvements or trade secrets, whether or not patentable or registrable under copyright or similar laws, which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company (collectively referred to as �Inventions�). I further acknowledge that all original works of authorship which are made by me (solely or jointly with others) within the scope of and during the period of my employment with the Company and which are protectible by copyright are �works made for hire,� as that term is defined in the United States Copyright Act.

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If I develop something on my own time, not using any of the company's resources, that is not related to the company's business, will the company be able to claim any rights to it?

Thanks!

Asked on 9/04/06, 12:15 pm

2 Answers from Attorneys

Steven Mark Steven Paul Mark, Attorney at Law

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Re: Assignment of Inventions in Employee Agreement

I'm not necessarily disagreeing with my colleague but I'd be interested to know if there is a fedral case that defines "scope of employment" to include the calendar period during which an employee is employed as opposed to their legitimate time during which it could be said that the employee is working for the employer. I know that certain commentary takes into account factors such as (a) is the work the kind of work the person is employed to perform; b) does the work occur substantially within work hours or when the employee might be reasonably expected to be working for the employer and (c) is the work motivated or initiated, at least in part, by a purpose to serve the employer. If the answers to those questions are "no" there may be an argument to be made. But one always has to take into account whether a legal position, no matter how justifiable, is worth the loss of good will, or worse, the actual job. Maybe you can negotiate a resolution.

Answered on 9/05/06, 12:15 am

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