Tuesday, September 24, 2013
Who Owns Lighting Invention?
Things to consider ... The fact that the HR department can't furnish you with agreements doesn't mean they don't exist. It's possible, for example, that general counsel or outside counsel have retained copies. If there is a legal dispute, chances are good that -- if the documents exist -- they'll be "found." Your written agreement trumps any other arrangement you may have with your employer. However, if the agreement goes too far -- for example, claims rights to all future innovations even when you're not working for the employer -- you may be able to challenge it (unfortunately, you'll have to do that in court). At the same time, you may complicate your situation if your innovation has some application within the employer's (non-lighting) industry, even if it's not a direct application. If there is any evidence that employer tools were involved in your innovation -- even in the absence of written agreement -- the employer might obtain an implied license known as a shop right. BTW, some states -- Delaware, North Carolina, Utah, California, Illinois, Kansas, Minnesota and Washington -- require that the employer furnish a copy of the law on pre-invention assignments to new employees.
The real world ... Your biggest concern may be if a company wants to license your innovation. That company will not want to enter into a license agreement if they believe there is a dispute as to your ownership, or alternatively, if they believe you may have used employer trade secrets in your innovation. You will most likely be asked to include an indemnity provision.
What's an inventor to do? We're sorry to have to tell you this ... but if you're interested in patenting, commercializing or licensing your innovations you will need the advice of an attorney. Unfortunately, there are too many unknown and wild cards to predict the outcome.