Patent Attorney and Founder
Good afternoon, everyone, and welcome to the Bold Inventor Show! I’m your host, JD Houvener, and today, we have a special guest with me—David Bosin. David, good afternoon! How’s it going?
Today’s topic is inventing on the job, something that really takes me back to my days at Boeing. This is something many people can relate to, and I’m excited to dive into it. David, you’ve got experience that goes beyond just patents—things like privacy and thought leadership—which will make for an interesting conversation today.
Before we dive in, I’ll quickly share my experience at Boeing. Were you ever an employee there, David?
Yeah, I’ve worked in tech for a couple of decades, including stints with various phone companies and one bank that’s now no longer around. So, yes, I know what it’s like to feel a bit removed from the control over your own work.
That’s interesting, especially since most of your work has been tech-focused. Was your role engineering-related?
Funny you mention that. It’s easy to get tunnel vision in these roles, but here’s something worth considering: patentability is a lot broader than most people realize. It doesn’t have to be a groundbreaking invention, like a new gadget. It could just be an improvement in a process or a small change to something you’re already working on. You don’t have to be the engineer designing the next big thing—you just need to think about whether what you’re working on could be protected as intellectual property.
For sure. It’s also about understanding what your role entails—what’s expected from you and how that relates to any potential inventions.
Right, so let’s jump into the heart of today’s topic: who owns the rights to an invention if you’re an employee? If the invention is connected to what you do at work, it’s pretty clear—your employer likely owns it. Let’s take a look at an example. Suppose you’re an engineer at an aerospace company, and you’re tasked with reducing drag on an aircraft. You come up with a new material to solve the problem. Great work! That’s potentially patentable, and your company likely owns the rights to it, especially if it’s tied directly to your job.
In most cases, your employer will own any invention you make as part of your work. That’s usually spelled out in your employment contract—if not, it’s generally assumed.
Absolutely, and even without a contract clause, if you were hired to design something, like say, an aircraft part, your employer owns what you create while on the job. That’s well-established law.
So, what if you’re a contractor or working on something unrelated to your job? That changes the game a bit, right?
Yes, exactly! Contractors, especially, need to make sure their contracts clearly state who owns any inventions they create. This should be addressed upfront—if you’re creating something for someone else, make sure they’re aware of who retains ownership. It’s vital to be clear from the start.
And speaking of contracts, you also have to consider Works Made for Hire laws, which only apply in specific situations. Most works created in employment aren’t automatically works made for hire, so contractors need to understand this nuance.
That’s a good point. For anyone unsure, it’s wise to have a brief conversation with an attorney to ensure you’re clear on your rights.
Exactly. Protecting your work legally is too important to leave to chance. But, let’s shift gears—what if you create something unrelated to your job? Let’s break down some of the factors that can influence ownership in these cases.
First, are you using your employer’s tools, equipment, or facilities? Even if your invention is unrelated to your work, using company resources can lead to the employer owning it.
Another factor to consider: how much control does your employer have over your work? If your employer can direct how you do your job, that’s a strong indicator the invention might belong to them. It’s not just about the job description—it’s about control.
Lastly, you also need to consider whether your employer has any right to control the way you do your work or if you’re operating more independently. The more you’re under their control, the more likely they’ll claim ownership.
Right! Those are the big ones to consider. The general rule is that if you create something while at work, especially if it’s connected to your tasks, your employer will own it. But let’s talk about privacy for a moment, especially if you don’t want to be named as the inventor.
That’s an interesting angle. As the inventor, you must be named in the patent application. But what if you don’t want that recognition? In some cases, like with controversial inventions, you might not want your name associated. Could you still file a patent without your name on it?
Great question. The short answer is: you must be named. There’s no such thing as an anonymous inventor. But you do have some privacy options—you can request that your application not be published right away. This would delay public access to your invention, though, and would prevent you from seeking international protection until it’s published.
For someone in a sensitive position, that could be a real issue. It’s kind of like the thought behind the Oppenheimer story—you may create something, but not want your name tied to it due to potential controversy.
Exactly. It’s a lot like the privacy concerns people have today, especially with social media influencers and celebrities. You own your image and likeness, and in some places, you have the right to protect it. It’s a tricky balance—intellectual property law is still evolving to address these concerns in today’s world.
I’m glad we’re having this conversation. It shows how important it is to understand the nuances of IP ownership, whether you’re an employee or a contractor.
And as an inventor, you should always be proactive—understand your rights, talk to legal experts, and protect your work.