In my previous column, I discussed how intellectual property, like any other form of property, can be assigned, licensed, bequeathed, etc. When a patent application is filed, the inventors listed on the application are the original owners of the invention. The initial ownership of the invention is subject, however, to any pre-existing contract the inventor may have signed with another party, such as an employer. Often, when scientists are hired by an organization, or a graduate student or professor is hired by a university, the employment contract will contain provisions stating that any inventions developed during the course of their work will be owned by the employer. Further, upon development of an invention, employers will often ask the inventors to specifically assign their rights to that invention to ensure that the chain of title is complete and accurate. While this seems relatively straightforward, it is worthwhile to explore the complicated legal issues that arise.

One case currently before the courts is that of Francisco Munoz, one of the inventors of foaming hand sanitizers, dispensers that have become ubiquitous in shopping malls and public bathrooms. Munoz and his partners formed a company to develop this product, which was subsequently bought out by a larger corporation, Deb Group. During his employment, Munoz executed assignment documents transferring the ownership of the invention to Deb. At a later date, Munoz was fired by Deb. Munoz now alleges that Deb pressured him into signing the documents, which he only later learned transferred his rights to the invention. While these allegations have not yet been proven in court, the saga provides a good lesson as to why you should always read and understand everything you are asked to sign.

As alluded to above, complicated legal issues of ownership also arise when an employee has signed an employment contract containing provisions which stipulate that inventions developed during the course of their work are owned by the employer. Let me paint a possible scenario: a grad student at a university signs an employment contract that specifically states that any inventions developed during her employment are owned by the university. Her research involves investigating novel polymers, which are to be used for the manufacture of computer chips. While running an experiment late on a Friday night, the student becomes bored (obviously this scenario is fictitious — who could ever be bored in a chemistry lab!) and mixes the polymers with a completely unrelated substance, which results in a new adhesive. Over the next several weeks, including weekends, she refines the adhesive and finds that it is superior to any of those known before. Eureka — an invention! But who owns the invention? There are convincing arguments on both sides. The student was using the university’s materials and equipment and was conducting research during the course of her degree. However, it’s clear that some of the research for the adhesive was conducted on her own time and was not related to the research she was specifically hired to conduct. In such a scenario, there are no easy answers as to who owns the invention. When complicated issues of ownership arise before a court, the outcome of the case will be heavily dependent upon the evidence at hand, with the court weighing those factors, and others, discussed above.

Disputes over the ownership of an invention often arise after the invention has become financially successful. It is therefore best to be proactive at the time a patent application is filed to determine who is the rightful owner of the invention and to maintain a clear record of any documents to support or establish that ownership.