Q: Are we allowed to file and own a patent while working for a company? The patent is not related to the company field.

Our contract mentions

"conceives, creates, invents, designs, develops, contributes to or improves any works of authorship, inventions, materials, documents or other work product or other intellectual property, either alone or in conjunction with third parties, at any time during Service Provider’s service to the Company Group (collectively, “Works”), to the extent that such Works relate in any way to the Company Group or its business, were invented, developed, contributed to or improved with the use of any Company Group resources, and/or come within the scope of Service Provider’s service (collectively, the “Company Works”), Service Provider shall disclose such Company Works to the Company Group promptly. Any copyrightable work falling within the definition of Company Works shall be deemed a “work made for hire” as such term is defined in 17 U.S.C. § 101. Service Provider hereby (i) irrevocably assigns, transfers and conveys, to the extent permitted by applicable law, all right, title

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: This question comes up all the time. You will need to take the contract and employee manuals that deal with the duty to assign inventions to an attorney in the state where you work. There are some states that have limits on the scope of this mandatory assignment clause for employees.

It will be somewhat fact specific to sort out what the scope of the company's business and whether your idea can be used within the company business. This is not a topic for a web page. You will need to have a confidential conversation with a competent attorney that does not represent the company on any other matters.

But to answer your question in the abstract, yes it is possible that someone working for one company can file a patent for an idea that was conceived and developed outside of company time and without using company resources. It often depends on whether you were hired to do inventive work or were hired to do some other task. Like I said, this is a fact intensive inquiry but it is at least possible that you will be able to file this patent application and retain ownership.

I hope that this helps.

Kevin E Flynn

Tim Akpinar agrees with this answer

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