By: Lee Kim, Esq.

Who owns the intellectual property rights (e.g., copyrightable material, invention, etc.) if one’s employment contract is silent on the issue and is in the absence of an intellectual property ("IP") policy?

The following are situations in which the employer owns the IP:

–           Intellectual property has been created by an employee within the scope of employment.

–           Intellectual property has been created during working hours with the use of employer’s facilities.

–           Intellectual property has been specially commissioned by the employer pursuant to a written agreement.

–           Intellectual property has been funded by federal funds, state funds, or third party sponsorship.

The following are examples in which the employee owns the IP:

–           Intellectual property created is unrelated to employee’s job responsibilities and the employee made no more than incidental use of the employer’s resources.

–           Employer has released the intellectual property to the inventor.

–           Employee has created a scholarly work, unless the employer specially commissioned such work (e.g., specifically hired the employee to create such a work or otherwise required the employee to create such a work).

Who is an "employee" of the employer?

Generally, an employee is an individual who has been hired by an employer for a wage or a fixed payment (e.g., a stipend) in exchange for rendered services, whereby said individual does not provide such services as part of an independent business.  An employee generally receives a W2 form from the employer for each tax year.

–           Real world examples include teaching and research assistants, teaching fellows, research fellows, work-study students, residents, interns, faculty, instructors, and the like — provided a stipend or other wage is provided in exchange for rendered services.

Independent contractors, on the other hand, are not employees. Instead, they have been hired by an employer for a specially commissioned project in exchange for certain services, whereby such services are provided on behalf of an independent business. An independent contractor generally receives a 1099 form from the employer for each tax year.

–           Real world examples include consultants, experts, and others retained for special projects by the employer.

Tip: Check your employment contract and/or consult your employer’s policies (e.g., an employee handbook) for guidance regarding intellectual property ownership. Ask your employer for clarification if questions arise. Universities and companies generally have specialized "technology transfer" teams to answer such questions and/or address any issues that may arise during the course of one’s employment. Please know that the above intellectual property ownership guidelines as "default results" and general guidelines in the absence of guidance from other sources.

Tip: What if your former employer contacts you to sign an intellectual property assignment agreement?  Are you obligated to do so?

The answer is maybe. Some contractual provisions are drafted such that they (legally) "survive" the termination of the contractual relationship. If you have any questions about your obligation, ask your prior employer to provide you the relevant parts of the contract(s) and seek the advice of local counsel.