Invention Assignment? I’m an Inventor?

Don’t go putting “Inventor Extraordinaire” on your business card just yet.  “Invention” is a term of art that in the legal context simply refers to any work that you’ve created, often as an employee for your employer, such as source code, UX/UI wireframes, blog posts, business plans, etc.  The list really goes on as to what can be characterized as an invention.  So when do you actually own something that you’ve invented/created at a company?  What if it’s not quite covered in the scope of your duties at the company?  This topic by itself is worthy of a multitude of blog posts, so I’ll just try to provide a quick set of guideline for both parties involved.

Guideline #1: If you have been contracted to make something, you probably don’t own it.

There are two ways for this to happen, generally.

First, in a normal employment relationship, an employee is expected to produce all sorts of materials for his job.  These will almost always be assigned to the employer via an invention assignment provision in the employee’s employment agreement.  Essentially everything created in the scope of employment falls under this categorization.

There is typically also a section to list materials produced by the employee that the invention assignment doesn’t apply to.  Often, employees may choose to ignore this section, because it could signal to the employer right at the outset of your employment) that they don’t intend to stay for very long.

Second, you may sign a work for hire agreement, which explicitly states that the employer is considered the copyright owner, or inventor of the materials produced.  This is typically used for independent contractors, because invention assignments are mostly construed to apply only to employer-employee relationships.

Guideline #2: If you have created something you were not contracted to make, you might own it in California…

… if you adhered to the requirements set forth in Section 2870 of the California Labor Code.  It states that you, as an employee, will own only materials created:

  1. On your own time,
  2. Not using the employer’s equipment ,
  3. Not related to the business of the employer, and
  4. Not resulting from work done for the employer.

The most common pitfalls involve the first two requirements, so here are some clarifications. Respectively:

  1. Working during business hours or even breaks, working in the office, etc.
  2. Company phones, company email accounts, text messaging on said company phones, company laptops, company lab equipment and materials, etc.  If the word “company” can fit in front of the object in question, it’s probably something you should avoid using.

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