Assignment Obligations

There are a number of different ways that corporations can acquire ownership of intellectual property developed by their employees. The most common mechanism is a contractual one, usually embodied in an employment agreement that the employee is required to sign when he joins the company. In exchange for employment, the employee agrees that intellectual property developed during the course of that employment will be owned by the employer. Because the development of intellectual property is so central to much of what nanotechnology companies do, they are well advised to have effective employment agreements in place to ensure that their ownership of inventions and creations by their employees is clear.

A common question that arises among people subject to such employment agreements is "What if I invent something at home without any support from my employer?" This actually occurs quite frequently. Inventive people are, after all, just that. They tend to have inventive ideas in a variety of different areas, not just in the specific areas of interest to their employers. Like many legal questions, the answer depends on a number of different factors. Most employment agreements include language that provides an exception for intellectual property that is developed on the employee's own time and without support from the employer, either in tangible form provided as tools and equipment, or in intangible form as trade-secret information that the employee has learned because of his employment. Even if an employment agreement doesn't specifically call out such an exception, courts generally read the language in such agreements restrictively so that such an exception is very often inherent.

The result is that, in many cases, such "home inventions" are owned by the employee and not his employer. But there is a critically important class of people to whom this exception does not apply: those who are "hired to invent." Whether someone falls into this category is not clear-cut; it is a highly fact-specific standard that ultimately hinges on the ability of the employer to provide evidence that the employee was hired to solve a particular problem and that the invention at issue relates to that problem. If a person is found to have been "hired to invent," though, it no longer matters whether the invention was made on the employee's own time. The employer owns it. In fact, it does not even matter under these circumstances whether there is an employment agreement. If the employee was hired to invent, ownership will rest with the employer irrespective of how, where, or when the invention took place.

As a field that is still in the process of emerging, nanotechnology is such that a relatively large fraction of employees of nanotech companies have been hired to invent. The scientists and engineers employed by such companies know that they have been hired to solve certain problems and to advance the development of specific areas of nanotechnology. All their inventions in those areas are therefore likely to be owned by the companies that employ them, with the technicalities of when or where they developed those solutions being irrelevant. This is an eminently reasonable state of affairs. After all, the companies are paying people with particular expertise to solve certain problems, and are entitled to own the solutions.

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