There are three issues in your situation that merit scrutiny. First,
is the presence or absence of a provision in your contractor agreement
signing rights to inventions to the company. If no such provision
exists, this gives you a good chance of being able to exploit your
invention yourself, although you may have to grant a nonexclusive
license to the company to use the invention without paying any
royalties. The other two issues relate to whether or not you were
engaged in order to invent or design improvements to the product, and
to what extent you used the company's resources to create your
invention. However, as an independent contractor, you have a stronger
position than an employee with respect to these issues.
Another issue is whether or not anyone else has helped you with the
invention, particularly someone who is an employee of the company. If
that is the case, you may have a coinventor who shares your rights to
the invention. If the coinventor is an employee of the company, then
they may be able to obtain at least a royalty-free license to the
invention.
Because these types of ownership situations can become complex, I
strongly encourage you to consult with an intellectual-property
attorney who can review any of your existing agreements with the
company and resolve your concerns. Based on the information you
provided, though, you should have ownership of your invention because
of your independent contractor status in the absence of any written
agreement assigning your inventions to the company.
Sincerely,
Wonko
"What is an independent contractor and how does this status affect
ownership rights?
An independent contractor is a person who contracts to do work
according to the contractor?s own methods and is subject to the
engaging party?s control only as to the final result of the work. Many
of the same factors used by the Internal Revenue Service to determine
whether, for income tax withholding purposes, a person is an employee
or an independent contractor are used by the courts to determine
whether or not the creator of intellectual property rights is an
independent contractor. Generally, rights in technology developed by
an independent contractor are owned by the independent contractor,
unless the contractor has signed an agreement to the contrary."
"Do You Really Own It?" Holland & Hart LLP (2005)
http://www.iph2.com/info.cfm?id=44
"In contrast, you don't own things created by an independent
contractor unless you both agree to it in writing. These agreements,
known as "assignments," usually transfer ownership to you, although in
the case of some copyrights, your business may acquire ownership from
an independent contractor under a principle known as a "work made for
hire.""
"Protect Your Intellectual Property" By Richard Stim (October 26,
2005) http://www.businessweek.com/smallbiz/tips/
"The general rule is that, in the absence of an agreement to the
contrary, an employer is entitled to a nonexclusive license to use an
invention devised by an employee while he or she was working for the
employer. As the U.S. Supreme Court has said, "where an [employee]
during his hours of employment, working with his [employer's]
materials and appliances, conceives and perfects an invention for
which he obtains a patent, he must accord his master a nonexclusive
right to practice the invention." In the context of patents, the
foregoing rule is referred to as the "shopright doctrine." Although
the employer is afforded a nonexclusive license to use the invention
without paying royalties to the employee, the invention actually is
owned by the employee, who has the right to exploit it commercially,
such as by selling or licensing it to other users. Even where the
employee works on the invention on his own time, if the employer's
resources are used to any significant extent, this rule usually
applies."
"Patents can only be conferred by the federal Patent Office, not by
any state, but once the patent has been issued the rights to the
patent are decided under state law. In many cases, an employer will
obtain from an employee (or, in other cases, from an independent
contractor who has been hired to work on a project that results in the
issuance of a patent) an agreement to assign any patents developed
while working on the employer's business. Those kinds of agreements,
although strictly interpreted and applied, generally are enforceable.
Even in the absence of an explicit agreement to that effect, the
employer still may compel the employee to transfer the patent to the
employer if the employee was hired to work on the project from which
the invention resulted."
"Inventions Made by Employees: Legal Rights" FindLaw (2005)
http://employment.findlaw.com/employment/employment-employee-more-topics/employment-employee-invention.html
"Many people are not aware that under the U.S. Patent and Trademark
Office rules, that anyone involved in the development of a
product/invention is required to be named as the inventor or
co-inventor."
"OOOPS! Looks Like I Have a "Co-Inventor"!" By Stephen Paul Gnass,
National Congress of Inventor Organizations (2005)
http://www.inventionconvention.com/ncio/specialreport/008.html
"In the event that a patent assignment is unenforceable, or was never
signed in the first place, an employer may retain what is known as a
?shop right.? This right occurs when an invention is created on the
employer?s time and/or with the use of the employer?s equipment. The
employee-/contractor-inventor will own the patent, but the employer is
granted a royalty-free, non-exclusive and non-assignable license to
use the patent. "
"Intellectual Property Considerations in Your Contractor and Employee
Agreements" Rider Bennett LLP (October 5, 2005)
http://www.riderlaw.com/news_pubs/article_detail.cfm?ARTICLE_ID=4323
Search terms:"work made for hire" patent "independent contractor";
"independent contractor" patent ownership; "independent contractor"
invention ownership; "independent contractor" invention rights |
