Employees' Inventions: Who Owns What Rights?

Often, when an employee is hired for a position that may entail inventive work ' such as tasks completed as an engineer or research scientist ' the employment agreement includes a clause relating to assignment of inventions. Typically, the employee agrees to assign to his employer all inventions that he develops during his employment that relate to his work, or, more broadly, to the employer's business. Agreements of this kind are typically enforceable. 'The right of an employer to contract for patentable discoveries made by its employees within certain limits is well recognized.' Guth v. Minnesota Mining and Mfg., 72 F.2d 385, 387 (7th Cir. 1934). However, terms of an agreement that are overreaching are not enforceable. For example, a term that requires assignment of an invention conceived after the inventor is no longer an employee may not be enforceable. Id. at 388-89. As another example, if a former employee develops improvements on patented inventions that he had assigned to his former employer, the latter may have no rights in any patents on the improvements. Crites v. Radtke, 28 F.Supp. 282 (S.D.N.Y. 1939).