Patent Ownership/Shop Rights
Who owns “your invention” if you created it at your employer’s workplace?
A common law right called “shop rights” may govern and whether the employee or the employer owns the invention depends on the facts and circumstances of each case. Rights are not universal and vary from state-to-state.
Factors include:
* Employment contracts (an employee may assign all rights to inventions to an employer)
* The intentions of the parties-Was the employee “hired to invent?”
* The nature of the business
* The nature of the invention
* The circumstances involving the creation of the invention-Is the invention related to the employee’s job function, was it made using the employer’s tools, or other resources?
One example of a state statute is the Minnesota Statute found at: https://www.revisor.mn.gov/statutes/?id=181.78
Section 181.78 Agreements; Terms Relating to Inventions
181.78 AGREEMENTS; TERMS RELATING TO INVENTIONS. Subdivision 1. Inventions not related to employment.
Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
Subd. 2.Effect of subdivision 1.
No employer shall require a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
Subd. 3.Notice to employee.
If an employment agreement entered into after August 1, 1977 contains a provision requiring the employee to assign or offer to assign any of the employee's rights in any invention to an employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer.