Should Inventions Be Automatically Owned By Your Employer? 291
An anonymous reader writes "Joshua Simmons authored an article for the N.Y.U. Journal of Intellectual Property and Entertainment Law. The article is a comparison of the developments in copyright law and patent law in the nineteenth century that resulted in copyright law developing a work made for hire doctrine while patent law only developed a patch work of judge-made employment doctrines. The article theorizes that patent law did not develop an inventions made for hire doctrine, because inventive activity was almost exclusively perceived to be performed by individuals. It goes on to suggest that, as patentable inventions today are generally perceived to be invented collaboratively, the Patent Act should be amended to borrow from the Copyright Act and adopt a principle similar to the work made for hire doctrine."
A rate should be set at hire (Score:5, Interesting)
By default/law, make it 50/50, and then let employers and potential employees negotiate.
the whole concept of property (Score:5, Interesting)
The copyright 'work for hire' doctrine is unfair (Score:5, Interesting)
More should be borrowed from the patent doctrine.
Now, if you create a work specifically commissioned by your employer, the employer should own the right to use your creation, but not to make a product out of it, and resell it, unless you were hired and have in writing communication that the work was specifically for that purpose
E.g. if you are hired to write custom software for an organization, by default that work should belong to you. If on the other hand, you were hired to build a custom software product, then by default, the work on that specific product, that you submit for that product, should belong to your hirer, as part of the understanding that you are doing product development work for them (versus just work for the benefit of their infrastructure).
Development of a product (giving ownership of your creative work for purposes of resale) should come with expectations of greater compensation, because you are handing over not just your hours of work -- but an opportunity to profit as well, from the resale of the work.
Whereas, development of software to meet an internal process, should come with an expectation that it is taylored to the needs of your employer's specific business, and you both retain rights to that.
The I.P. clause (Score:2, Interesting)
I've wonder if the IP clause you find in employment contracts is even legal. How can an employer deem that they automatically own intellectual property I developed privately in my own time with a tenuous link to my current role? It makes *some* sense for employees where their role is to produce intellectual property, researches , authors etc, but it's hard to see how the blanket clause I've seen in every role I've had could stand up to a serious legal test.
Copyright law is what has it wrong (Score:5, Interesting)
IMHO, the major problems in IP law come from corporate ownership. It shouldn't be possible for corporations to own copyrights or patents, they should only be able to be granted strictly limited rights by the individuals who do own the IP.
Killing innovation (Score:5, Interesting)
One of the reason why California has so many startups is that California State law clearly states that work done by an employee for the employee's own time and business interests belongs to the employee. It is very clear that the author of this article has no experience with startups.
If the default "inventions belong to the employer" rule was in effect everywhere, then the net effect would be to lock up employee ideas with little actual benefit to the employer. This is because most big companies are not very innovative, and thus fail to exploit most employee inventions. Most of the modern world as we know it would never have happened.
Dangerous and bad idea. I hope that the article remains forever ignored after this.
Re:irrelevant (Score:3, Interesting)
inventions for the inventors (Score:4, Interesting)
How many inventions are/ were shelved because it would upset the financial status quo of the greedy. Pure genius is not bought, traded nor stolen. It is a god given gift. Most inventors would like to live modestly while giving to humanity. Those entrepreneurs who live in the obscenity of avarice eventually get what they deserve.
It's been over 100 years and still the truth of Tesla's inventions is protected by "national security", why? The powers that were are holding tight to these truths and yet, they are still coming into the light of day.
This government had the big three auto manufacturers over a barrel. They could have been told to put on the road, an automobile seating four adults in safety and comfort, with sufficient power, and getting over 80 miles per gallon, at a reasonable price or get out of the business. What did these CONgressMen do? They threw taxpayer money at the big three for bonuses while the taxpayers lost their jobs, pensions, homes and futures. And then these asshats wonder why the American people are pissed at them, hmmm.
Re:Depends .... (Score:5, Interesting)
If you've invented this on your own time, money, and resources there is no way in the shady side of hell that your employer should have any ownership of it. If you did this while being compensated by your employer, the situation is different. If you've used your employer's money and resources, then it is fair.
Well that depends...
Most people can't compartmentalize their lives that completely. This is especially so when engaged in intellectual work (as opposed to factory drone work where you can simply flip a switch in your brain as you walk out the door).
So if I hire you to develop a left handed corner scraper and in the process you create a patentable piece of work, you might claim (truthfully) that the idea came to you while sitting on the throne in your house on a sunday afternoon when you saw the reflection of the light switch in the mirror.
Still, had you not been working for me explicitly on this project, you would, in all probability, never have had that spark of intuition.
Its too easy for you to claim you had the idea after work hours. Every body mulls over work problems at home.
Similarly, if you are employed to handle billing for your company and you stumble upon a totally unrelated idea, say for a new fishhook, on your day off or even on the job, its too easy for the company to claim it.
Fishhooks have nothing to do with billing. Everybody mulls over recreational problems while at work.
So here's an example to draw upon that shows how the compartments still happen, regardless of how steeped in our work we are.
I do cyber security, and I absolutely live, drink and breathe it. Several years back, I had been working on a book under contract. The book was germane to my field of professional expertise. I wrote it on my own time, on my own computer, and the content had nothing to do with my current employer. (Just to make sure that part's clear.) I got bored in my job, having hit a point where things were progressing no further, and gracefully started exiting. I had an offer from a company (let's call them "AC, which is the letters of the company name but rearranged") and was in the process of taking it, even having given notice at my current employer and started helping them look for a successor. Then, I got their intellectual property agreement, which stated that anything I put out was their property...ANYTHING...during my employment with them. I'd seen this before, and had asked at prior jobs...the solution is to tack on an exception for this or that thing, and that's how it's always gone. So no problem, right?
Wrong. I called the recruiter, and he said they make no changes, no exceptions. I pointed out that they would be effectively stealing from me, as by this point the book was actually done, and just waiting to hit the printers. No flexibility. So I declined the job offer after all, and ended up taking a different one...which turned out to be much, much better in the end. Pity, as AC had plans for me to travel to a client and be the centerpiece of a project that was kicking off. They suddenly developed "flexibility for an exception," but by that point, I was past having any desire to interact with them on any level whatsoever, much less steer my career through the middle of that company. I went to work at EDS, and did beautifully. (Until HP bought them, that is...but that's another profanity-laden rant.)
Re:irrelevant (Score:5, Interesting)
Every single R&D employer requires employees to assign all inventions. There is no way that is negotiable. Your pay/commission/whatever for having to do so may be, but there's no way around this requirement in today's employment market.
It's not that big a problem at all...this is simply not the truth, most of the time. I've had things in progress when I joined a company; you tell them about it, explain to them that you would like an exception to the agreement, and they (almost always...see my post above) agree to that with no muss, no fuss. It's not hard, it's not complicated, and it doesn't start a big fight. Hell, it doesn't even make you less desirable; companies want people that innovate, and if you're already doing it on your own before you even show up there, that's an awfully good sign that you'll do it for them too.
I've been through that several times, and it's only been a hassle once...and that, from a corporation that is notorious for being a total cabal of asshats. Every other time was actually a good thing, and once it actually helped me in my salary negotiations.
Simple answer (Score:5, Interesting)
Re:Depends .... (Score:5, Interesting)
I've actually had an employer that wanted to license what I developed at home, and he wanted to pay me to convert it to his mainframe platform.
Since this was back in the days prior to there being such draconian "all your inventions are belong to us" clauses, the negotiations went smoothly.
I retained ownership.
He got a non-transferable perpetual license to both the PC and Mainframe versions.
I got a mainframe version using his resources.
No money changed hands.
Everybody happy.
Its always worse when lawyers are involved.
Re:Copyright law is what has it wrong (Score:4, Interesting)
Your solution solves no problems, but introduces plenty.
Re:A rate should be set at hire (Score:5, Interesting)
I've never seen any "only while on the job" language in any contract. The language I see is more along the line of "as long as you are employed by XYZ, all your inventions are belong to us."
I and a number of other staff negotiated 'only on the job' language in our employment contracts back in 2000, so yeah, it happens.
These days, I require such language. I have no problem with works for hire, but I do have a problem with someone else taking credit for something in which they were never involved.
Re:A rate should be set at hire (Score:4, Interesting)
Welcome the world of unenforceable contract terms.
IANAL, but like non compete terms, most "all your base are belong to us" terms are overly broad and non enforceable. You of course have to actually go to court, be able to afford a lawyer who can find his or her own body parts in a darkened room and once again most importantly be able to afford a lawyer who can find his or her own body parts in a darkened room, but generally speaking as I understand it, if you create in your own time on your own equipment and can prove it the invention is yours, even if you've done it on work equipment they'll generally only end up with a free perpetual license as opposed to actual ownership of the idea. I'm fairly certain this applies to copyright which does have work for hire so I don't see why it wouldn't apply for patents as well.
It's the magic of the legal system though, your employer gets you to sign an idiotic contract clause because you're afraid you won't get the job knowing that you are incredibly unlikely to actually challenge said term, even if the legal team know full well it'd get tossed out if you did.