Most of the companies obtain an agreement from employee to assign any patents developed while working on the employer's business at the beginning of employment itself. And later make the inventors sign invention-specific confirmatory assignments with each potentially patentable invention.
Even if that is not the case, the employer still may compel the employee to transfer the patent to the employer, especially if the employee was hired to work on the project from which the invention resulted. This is because even though the employee created the invention, he or she was hired to do so and is simply doing his or her job.
Any invention made by the employee in the workplace during working hours belongs to the employer is quite clear, however, what happens when the employee creates the invention outside of working hours?
In one of the recent cases the Court considered the type on invention and found it similar to the work, the employee was paid to do by his employer. The fact that employee worked in his own time at his home using his own equipment was considered irrelevant. The employee used his initiative and his own tools and time; however, he would never have begun to work on the project if he had not been exposed to it through his employment in the first place.
However, it is important to remember that this principle may not apply to an invention which is different from the kind of work employee was hired to do, the general rule in the absence of an agreement to the contrary, is that an employer is entitled to a nonexclusive license to use that invention, however the invention is owned by the employee.
To avoid such conflicts, it is always advisable to have the employee sign a general assignment form at the time of employment, as these agreements are generally enforceable.
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