We are often asked by inventors if their ideas and creations belong to their employers. We see this particularly with researchers who develop something at home, in the evening, or on weekends. With most people working from home due to the ongoing coronavirus pandemic, many people have some free time and think that now the right time develop a new app or even write a book.
With creating new inventions, however, there is a risk that your employer could claim ownership over your intellectual property. This is because your employer generally owns the IP rights you created during the scope of your employment.
However, you can retain your IP rights as long as your IP is developed outside the scope of your employment.
Scope of employmentSo what does “scope of employment” mean and what falls under the “scope of your employment?” Scope of employment really comes down to your employment agreement and refers to the work and duties you were hired to perform. If you were hired by a biotech company to research and develop new gene therapies, then any gene therapies you develop would probably fall under the scope of your employment. However, if you develop a language learning program, that program would likely fall outside the scope of your employment.
More challenging situations arise when the IP you develop is similar to that which you were hired to develop. In these situations, your employment agreement will be instrumental in outlining exactly what duties you were hired to perform. However, even the employment agreement can sometimes be unclear when it comes to outlining your duties.
To minimize the likelihood that your employer can claim rights to your invention, the following four tips can help demonstrate that your IP was developed outside the scope of your employment.
1. Start recording everything - Maintaining meticulous records helps reduce questions surrounding ownership over the new IP and can help prove your ownership. Write down your project dates, including the start date, in a diary and keep track of its development stages, including any discussions with third parties that you have had. You can also maintain an electronic record by sending an email to your personal address that documents your contributions.
2. Use your time wisely - Make sure you work on your project outside of your work hours. This means focusing on your project only in the evenings and weekends if your work hours are from nine to five. If you work on your project during work hours, you can risk the employer claiming rights to it.
3. Use separate devices – Similar to the point above, make sure you work on your project using your own devices. Do not use your employer’s computers, tools, copiers, scanners, or other devices for your personal work. Use only your own personal computer or laptop. This means that any inspiration you get while working should be written on paper and pen, and not on your office device. Likewise, use only your personal email when communicating about your invention.
4. Use your own money – Finally, make sure you fund your project using your own resources. This means using your own money to pay for expenses like electricity, paper, permits, and raw materials. Do not claim money from your company for any IP-related expenses. If you use your employer’s money to pay for any parts of your invention, you risk jeopardizing ownership of it.
At the end of the day, whether your employer can claim rights to your invention will come down to whether or not the invention was created within the “scope of your employment.” By using your own resources, time, and money, and keeping a detailed journal of your developments, you can increase the likelihood that your invention will stay in your hands.
BioPharma Law Blog posts updates and analyses on IP topics, FDA regulatory issues, emerging legal developments, and other news in the constantly evolving world of biotech, pharma, and medical devices.