“If you have an employment agreement with a provision on intellectual property, have it reviewed by an attorney before you begin applying for patents. A good attorney should be able to give you some clarity. Suppose, however, that your employment agreement has muddied the waters a bit. In that case, you have a few different options, and all of them will come with some risk. First, you may speak with your employer vaguely about your plans and attempt to get a release, or work out some other agreement so that you can pursue your project alone. In some cases, collaboration may provide you with the resources to proceed, and ease a bit of the financial burden. Of course, this may bring undesired attention to you, and may require some diplomacy and care. Second, you may sit on your invention or change your employment. Here, time is working against you and may affect the patentability of your invention. Additionally, it’s possible that even after the termination of your employment, that your old employer will still claim a right to an invention that was conceived during your employment with them. Third, you can forge ahead without telling your employer. There are no easy answers, but this is the requisite analysis, and it is quite easy to make a mess.
If you do intend to pursue an invention while employed, a good rule of thumb is to work on your invention on your own time, in your own house, using your own resources and your own money. You don’t want to blur the lines. You want to clearly differentiate between your property and your employer’s.”
Peter D. Sleman is an attorney. He is the author of The Physician Inventor: The Doctor’s Handbook to Patenting Medical Devices and Methods.
He shares his story and discusses his KevinMD articles, “Intellectual property provisions in physician employment agreements” and “The COVID-19 breakthroughs are coming.”
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