In most cases, the patent rights to the invention will be yours as long as you can prove that it was done on your own time with your own facilities and materials. However, there may be some cause for investigation if your invention includes use of any company trade secrets or similar processes found in your job function.
Even if you have obtained the patent rights to your invention, your employer may retain “shop rights” to your patent. Shop rights entitle your employer to use your invention without charge (or royalties) and without liability for infringement. This right is based on the employer’s presumed contribution to the invention through materials, time or equipment.
In general, an employer has shop rights to your patent when they have financed the development through payment of wages and/or provision of materials, tools and workspace. You as the inventor and patent holder retain your patent rights to issue licenses and sell the patent to third parties. However, even if you sell the patent, your employer may retain its shop rights to the patent.
Independent contractors are also included in consideration of an employers’ rights to a patent. Even though they are not considered an employee of the company, an independent contractor may find the patent rights of their invention belong to the company that hired them, especially if the company furnished the means to create the invention.
The California patent attorney team at the ADLI Law Group P.C. are experts in patent application, trademark and copyright services. With clients across Los Angeles county and even as far as our international clients in China, Taiwan and Japan, we’ve helped hundreds of inventors secure their ideas. Contact us today for experienced help with securing the patent rights to your invention. (213) 290-4933