Oregon Patent Help-Inventing While Employed

[natron1]

I live and work in Oregon. While working for a medical device company here, I developed a product (off hours) that is not related to the health care industry. The company I work for has a proprietary process to synthesize a compound. I have developed a product that uses this compound (which is not IP protected by anyone), but does not have to use the proprietary process (although it can).

My question is: what rights does my employer have to my invention? My contract does not have anything explicit about IP issues.

Any help is greatly appreciated.

 

[divgradcurl]

My question is: what rights does my employer have to my invention? My contract does not have anything explicit about IP issues.

There is no way to tell from just these facts alone. The fact that the invention "can" use your company's proprietary processes suggests that at least in part the invention came about because of your employment -- that may give the company rights to the invention.

You might want to discuss this with your own attorney, or ask your company to sign a waiver of any rights to the invention. If the invention is really unrelated to the company, they may not have a problem signing such a document.

 

[natron1]

Thanks for the suggestion. I have thought about talking to an attorney about the issue and have also considered approaching management at work to discuss the possibility of a technology license or development of a spin-out company.

Here is another question: I was looking through the employee handbook and it says something like: "any invention or discovery developed by an employee while employed at (company) is property of (company)".

How is this legal? Is it really legal to say that 'any invention' is property of the company? Say I invented a new wheelbarrow or screwdriver while working at a pharmacuetical company, would it really be legal for them to say that the completely unrelated product was their property just because I am their employee???

I'm sure people run into this all the time, what is the best (and cheapest) course of action.

 

[divgradcurl]

How is this legal? Is it really legal to say that 'any invention' is property of the company? Say I invented a new wheelbarrow or screwdriver while working at a pharmacuetical company, would it really be legal for them to say that the completely unrelated product was their property just because I am their employee??

Whether or not such a clause in the employee handbook would be enforceable or not is one question -- but there is no question that such a clause is legal, at least in principle. By accepting the job and accepting a paycheck, you agree to the terms of the employment -- and one of the terms could be that clause you stated.

But you would need to talk with an Oregon employment attorney to really see if Oregon law would make such a blanket clause enforceable.