11. September 2021
California law and others generally require the employer to inform the worker that the invention assignment agreement does not apply to an invention that, by law, is not considered an invention of the employer. Companies often hire and invest in themselves to develop new products, improve processes, create new technologies and open new markets. In this investment, it should come as no surprise that employers generally own the intellectual property created by their employees in the course of their employment. However, intellectual property created by a worker other than in the course of employment belongs to the worker and not to the employer. These simple principles pose challenges for both workers and employers. The ownership of the patent, like copyright, is probably the property of the inventor, that is, the inventor of the work. Employment contracts generally require the assignment of ideas, including patentable ideas, to the employer. Even if such an agreement does not exist, the ownership of the personnel cannot lead to an exclusivity of use or exploitation of this idea. The employer may continue to maintain „store rights“ over the process or invention whose development it has supported. The idea of shop rights gives an employer who has provided funding, materials, tools or working time for the project non-exclusive rights for the use of an invention. The employer may not assign or transfer sales rights to another, unless expressly authorized, with the exception of a transfer of the employer`s business as part of a sale of a business. Any provision in a contract of employment providing that a worker assigns or proposes to assign his rights to an invention to his employer does not apply to an invention that the worker has fully developed in his spare time without using the employer`s equipment, provisions, facilities or trade secrets, with the exception of inventions that: At least nine states have passed laws regulating shipping agreements for workers` inventions.
Seven of these states — California, Delaware, Illinois, Kansas, Minnesota, North Carolina and Washington — have almost identical requirements. For example, the California Labor Code § 2870 provides that agreements should also be designed to encompass the widest possible range of intellectual property. . . .