Source: International Legal Strategy Vol XI-11 (November 2002)
Author: Kenneth J. Rose, Esq

As a general proposition, there is no rule in the U.S. that an employee must assign his rights in his inventions to his employer. In the case where there is no valid written agreement that requires the employee to assign ownership of the invention to the Company, the controlling law is the common law of the State where the employment occurred. Although the applicable law might vary in some respect from State to State, three general common law principles apply to most employment relationships in the United States, to wit.

1. If an employee is not hired specifically for the purpose of inventing anything, then the employee will have ownership and patent rights of whatever he may invent during the course of his employment. This general rule applies even if the invention is related to the Company’s business. In Banner Metals, Inc. v. Lockwood, 178 Cal. App. 2d 643 (1960), the defendant Lockwood formerly was employed by the plaintiff corporation in a general capacity and not specifically to perform service of an inventive nature. The California Court of Appeal held: “[I]t is well settles that one, by merely entering an employment requiring the performance of services of a non-inventive nature, does not lose his rights to any invention that he may make during the employment, although the employment may have furnished him the opportunity or occasion for the conception of an idea which may lead to a patent, and the rendition of services in the course of his employment may have so enhanced his mechanical skill, scientific knowledge and inventive faculties as to enable him to develop and perfect the idea into a patentable article; this is true even if the patent is for an improvement upon a device or process used by the Company or is of such great practical value as to supersede the devices or processes with which the employee became familiar during his employment. Id. at 654.”

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