Ashburn, VA asked in Intellectual Property and Patents (Intellectual Property) for Delaware

Q: If I am inventor on a patent owned by the corporation I work for and the patent gets licensed, am I entitled to paymnt?

I live in the state of Delaware and am an inventor on a patent owned by my company (they are a non-profit and they applied for the patent; I did the work during my employment with them). The patent is going to be licensed by a company. I want to know whether I have legal grounds for compensation (single payment, royalties, etc) and if so, how that amount is determined.

1 Lawyer Answer
Cameron Tousi
Cameron Tousi
  • Patents Lawyer
  • Washington, DC

A: You've asked an important question, that comes up often with employees, and the answer is somewhat complicated.

In their employment agreements, many employers these days require new employees to assign any and all rights to their new inventions to the company. They also typically require employees to identify their inventions preexisting the employer-employee relationship, to draw a boundary between what is the employee's versus what will belong to the company once the relationship commences. These requirements are especially true for tech company employees, where innovations are an important part of the company's business model.

If no such agreements are in place, you have to look at the applicable laws in the employment state, and sometimes in the employer's headquarters state or the employee's state. States typically have "shop rights" that provide rights, such as outright ownership or some kind of license to newly created inventions by employees to their employers, especially if the invention was created during work hours. An example may be a royalty-free, non-exclusive, irrevocable license to use the invention afforded to the company. It's all state-dependent.

You should speak to a lawyer about this issue.

Erik Špila agrees with this answer

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.