- Black Belt
- Posts: 2414
- Joined: Sun Jan 21, 2007 7:32 pm
- Location: United States
In a word...Yes.
If you signed a pre-employment agreement, which requires that you assign all rights for work done by you on the premises (as well as any ideas you develop off-site, which may compete with your employers scope of operations at the time), then you would need to plan on transferring those rights over (assign them) to your employer once the patent process has been initiated.
In all fairness, if you come up with ideas that you otherwise would not have if you weren't being paid by your company, then it should be entitled to them. Think of it as becoming a more valuable asset to the organization.
That doesn't mean let yourself get railroaded by the company. Often, very restrictive legal agreements get nullified once courts or other authorities get a chance to review them.
So, don't fall for stipulations involving "anticipated research" because, in today's aggressive business world of corporate mergers and hostile takeovers, that could mean practically anything. And don't be duped into giving your employer "a chance to review any ideas the employee may develop (especially during a specific period after the employment has been terminated)" I mean, come on. Companies need to embrace an incentive to take care of their workers, particularly the ones who produce good ideas. And, taking effective action to secure IP rights has absolutely nothing to do with employment periods, necessarily.
If you think you know your company well enough to believe that your invention is truly unrelated to their business...then just don't tell them about it. It's that simple. Let them come after you much later on if they need to, with actual proof of where their "anticipated research and direction" really took them.