Inventions retained: Overview, definition, and example
What are inventions retained?
Inventions retained refer to creations, discoveries, or innovations made by an employee, contractor, or other parties during the course of their work or contractual relationship, where the intellectual property rights to those inventions are not transferred to the employer or client. This typically occurs when the terms of an employment contract or project agreement specifically allow the inventor to retain ownership of their inventions. Inventions retained are often distinguished from inventions that are automatically owned by the employer or client, particularly in cases where the invention is directly related to the work performed or resources provided by the employer.
Why are inventions retained important?
Inventions retained are important because they address the ownership rights of intellectual property developed during employment or contractual relationships. This provision allows inventors to maintain control over their creations, particularly if the invention was developed independently of their job duties or using personal resources. It is also important for ensuring fairness in contracts where employees or contractors develop new technologies, products, or processes. By clarifying ownership, inventions retained help avoid disputes over intellectual property and ensure that the rights to the invention are properly assigned, whether retained by the inventor or transferred to the employer.
Understanding inventions retained through an example
For example, an engineer working for a technology company develops a new software algorithm in their free time, outside of their normal working hours and using personal resources. The company’s employment contract includes a clause stating that the company will own any inventions made during the course of employment. However, since the algorithm was developed outside the scope of the engineer’s job duties, the engineer may be able to retain ownership of the invention. In this case, the invention is retained by the engineer, not the company.
In another example, a researcher working for a pharmaceutical company creates a new drug formula while using the company’s laboratory equipment and funding. The invention is directly related to the company’s area of business, and the employment agreement specifies that any inventions related to the company’s products or services will belong to the company. In this case, the invention is not retained by the researcher, but is instead owned by the company.
An example of an inventions retained clause
Here’s how an inventions retained clause might appear in an employment or contract agreement:
“Any inventions, discoveries, or works of authorship made by the Employee during the course of their employment that are not directly related to the Employer’s business or use of the Employer’s resources shall be the sole and exclusive property of the Employee. The Employer shall have no claim to ownership of such inventions, provided that the invention was made outside of the scope of the Employee’s duties and without the use of the Employer’s proprietary resources.”
Conclusion
Inventions retained address the ownership of intellectual property created by employees or contractors during their work. These provisions are important for distinguishing between inventions developed for the employer and those created independently. By setting clear terms for ownership, inventions retained help protect the rights of both the inventor and the employer, preventing legal disputes and ensuring that intellectual property is properly assigned. It is essential for businesses and individuals to clearly outline intellectual property ownership in contracts to avoid confusion and protect their respective rights.
This article contains general legal information and does not contain legal advice. Cobrief is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.