Patenting on the Side

There are some things inventors should know about who owns their ideas.  First, the patent statute and the Constitution of the United States vests ownership of patents in the inventors as an initial matter.  After that, ownership can be transferred like any other property right.

Generally, it is straight forward if the inventor has a written agreement to assign the invention, such as in an employment agreement of consulting contract.  In some situations, an inventor may have an obligation to transfer ownership to their employer, client, or customer depending on a number of factors even if there is no provision in a written contract.  Some questions to think about are:

Was the inventor hired for his inventing skills?  There is a difference between an engineer hired to develop new products and an employee not hired for his or her technical skills.

Did the inventor use the other parties resources to develop the invention?  This could include using employer owned computer equipment and software as opposed to using your home computer.

Does the invention relate to the other parties business?  There could be different outcomes if an automotive engineer invents a new engine air intake valve, or instead, a new and better mousetrap.

This is not an exhaustive list, and I am in no way presenting a journal article type review of the law.  These are just some indications that may be helpful to a non-lawyer inventor.

In my case, the invention is unrelated to my employer’s business.  It actually relates to a personal hobby.  No employer resources were used in it’s development, and I think it’s hard to argue attorneys, though hired for their creative and critical thinking skills, are hired to invent.  The downside to that is I can’t really expect to be reimbursed for filing fees.  Oh well, it’s a small price to pay for the best thing since sliced bread.

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