In what circumstances might an employer have rights over an employee's invention despite the absence of a traditional written assignment agreement between the parties? The U.S. Court of Appeals for the Federal Circuit recently addressed this question in Omni MedSci v. Apple, 7 F.4th 1148 (Fed. Cir. 2021), in relation to a university professor who invented and patented certain technology during a leave of absence. Although the professor never formally assigned the patents to the university, the parties disputed whether the university's by-laws—which provided that certain inventions "shall be the property of the university"—constituted an effective assignment. While the Federal Circuit held that the phrase "shall be" indicated a mere promise to assign (rather than an effective present assignment of future-developed IP), the fact that the court considered whether to find an assignment despite the absence of a formal written agreement indicates that courts are willing to infer a transfer of employee inventions to the employer.

This consideration has become even more critical in the modern world, where the workplace paradigm shift from in-office to work-from-home has affected the question of when an employee is "at work" and who owns the rights to such employees' inventions. Although employers are best served by having employees sign well-drafted assignment agreements, under certain circumstances employers may own the intellectual property rights relating to employees' inventions even in the absence of such an agreement. These circumstances vary based on whether patents, copyrights, or trade secrets are at issue, with some inventions (such as software) potentially implicating all three.

Ownership of Patent Rights

In the United States, patent rights are created when a patent is granted by the U.S. Patent and Trademark Office, and vest initially in the inventor(s) of the patent. Inventors may freely assign these rights to others, including their employers, both before and after the patent grants. It is therefore common for employers to have employees execute an agreement presently assigning all future patent rights to the employer at the start of employment.