Research Enterprise

Here is a state law pertaining to employer claims to employee inventions:

Sec. 2. Employee rights to inventions ‑ conditions). (1) A 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 does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee’s own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer’s actual or demonstrably anticipated research or development, or (b) the invention results 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. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.
(2) An employer shall not require a provision made void and unenforceable by subsection (1) of this Section as a condition of employment or continuing employment. This Act shall not preempt existing common law applicable to any shop rights of employers with respect to employees who have not signed an employment agreement.
(3) If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee’s rights in any invention to the 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, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.

This is a typical set of requirements. First, a limitation on the claims an employer can make in patent rights of employees.  Second, a limitation on making a claim outside the limitation as a condition of employment.  Third, a requirement that if a claim is made a condition of employment, then the employee must get written notice of the limitation.

[There are arguments out there that these sorts of laws–in eight states or so–actually expand an employer’s right to claim inventions over federal common law. Federal common law, for instance, does not recognize use of an employer’s resources as a basis for a claim to ownership of inventions–all that might get in equity is a “shop right”–a right for the employer to practice the invention royalty-free.

The thing that’s the more interesting is that university officials end-run the law by asserting that a university patent licensing function means that all inventions any employee might make come within the business of the employer or its anticipated future development, which now seeks to make money from any invention an employee might make. Such a move simply defies the law and attempts to transform the business upon which an organization is founded become any dealings an organization may have with patents on inventions.] Continue reading →