Asserting Ownership of Employee Inventions in a Work-From-Home Environment

June 4, 2020

Many employment contracts include an invention assignment agreement, which gives the employer certain rights to inventions created by an employee. Specifically, under such assignments, an employer generally owns the intellectual property created by its employees in the course of their employment.

There are, however, limitations on invention assignment agreements. For example, the agreement may not apply to an invention developed on the employee’s own time; without use of the employer’s equipment, supplies, facilities or trade secret information; or if the invention does not relate to the employer’s current business or fall within the scope of the employee’s work.

As more and more employees work from home, the line between the “work day” and an employee’s “own time” may be blurred. In addition, more employees are using their own equipment, such as personal computers and cell phones, to perform work for their employer. Employers should consider how these new work-from-home arrangements could impact their ability to claim ownership of employee inventions.

For example, employers should confirm that their employees are using company resources, including company-supplied computers, to perform their work. Use of a secure connection to the company’s network, such as through a VPN, may help establish that remote work is nevertheless in the scope of an individual’s employment. This serves to protect both the employer’s claim to intellectual property and the employer’s confidential and trade secret information.

Employers should also review the specific language of their invention assignment agreements. At a minimum, such agreements should include an expansive but accurate job scope for each employee, and should cover work performed by an employee remotely, after business hours and even using an employee’s own resources, to the extent that work relates to the employer’s business or the employee’s scope of employment. Lastly, employers should remember to use similar invention assignment agreements when working with independent contractors.

McGuireWoods has published additional thought leadership analyzing how companies across industries can address crucial business and legal issues related to COVID-19.

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