> the [California] law automatically says that inventions conceived by employees in the course of performing their duties belong to the company and not to the employee.
It's been awhile since I researched this, but the law used to be that, absent an invention-assignment agreement, the employee had to be either "hired to invent" or "set to experimenting" for the employer to be the automatic owner.
I had to litigate the latter point one time for a large telecom company. A non-technical employee had invented an improvement in some specialized equipment that the company used, but he hadn't been hired to invent and didn't have an invention-assignment agreement. The company filed a patent application. The in-house patent lawyer went to see the employee to get him to sign a patent assignment - on the sidewalk he ran into the employee, who had just been laid off. The employee sued the company for misappropriating his invention. The company won a summary judgment that the employee had been 'set to experimenting,' but it would have been way simpler and cheaper if the guy had just signed an invention-assignment agreement.
Oops, I had oversimplified things in making my statement as I did (I deal with these cases where people routinely are "hired to invent" and so took that for granted in making the statement). Thanks for the clarification.
Of course, this is one more reason (as you point out) why employers should not treat this issue too loosely.
Comments
> the [California] law automatically says that inventions conceived by employees in the course of performing their duties belong to the company and not to the employee.
It's been awhile since I researched this, but the law used to be that, absent an invention-assignment agreement, the employee had to be either "hired to invent" or "set to experimenting" for the employer to be the automatic owner.
I had to litigate the latter point one time for a large telecom company. A non-technical employee had invented an improvement in some specialized equipment that the company used, but he hadn't been hired to invent and didn't have an invention-assignment agreement. The company filed a patent application. The in-house patent lawyer went to see the employee to get him to sign a patent assignment - on the sidewalk he ran into the employee, who had just been laid off. The employee sued the company for misappropriating his invention. The company won a summary judgment that the employee had been 'set to experimenting,' but it would have been way simpler and cheaper if the guy had just signed an invention-assignment agreement.
Oops, I had oversimplified things in making my statement as I did (I deal with these cases where people routinely are "hired to invent" and so took that for granted in making the statement). Thanks for the clarification.
Of course, this is one more reason (as you point out) why employers should not treat this issue too loosely.