Patent Attorney and Founder
Who owns an invention created while you’re employed?
It’s one of the most common, and misunderstood, questions in intellectual property law.
In this episode of the Bold Inventor Show, J.D. Houvener sits down with intellectual property attorney David Bosland to discuss one of the biggest concerns facing inventors: what happens when a great idea is developed while you’re working for someone else?
The conversation explores employee inventions, contractor agreements, patents, trade secrets, confidentiality, ownership rights, and practical strategies for protecting intellectual property without creating unnecessary legal risks.
If you’re an inventor, entrepreneur, engineer, designer, or employee working on a side project, this discussion offers valuable insights into how intellectual property ownership really works.
Blog-Style Transcript
J.D. Houvener:
Welcome to the Bold Inventor Show. I’m your host, J.D. Houvener from Bold Patents, and today I’m joined by attorney David Bosland.
Our topic is inventing on the job, and it’s one that comes up constantly.
I experienced it during my time as an employee at Boeing, and I think many people wonder the same thing:
Who owns an invention created while you’re employed?
Before we begin, remember that this discussion is for educational purposes only. We’re talking generally about patents, trademarks, copyrights, and intellectual property. Nothing discussed here should be considered legal advice.
Please don’t share confidential information.
David Bosland:
Thanks for having me.
I’ve spent decades working in technology, software development, management, telecommunications, and banking. I’ve experienced both the technical and legal sides of intellectual property.
One thing people often overlook is that inventions don’t always look like traditional inventions.
People assume patents only apply to engineers building a better mousetrap.
That’s not true.
Processes, workflows, improvements, and many other innovations may qualify for intellectual property protection.
People should pay much closer attention to the work they’re doing and ask themselves:
Did I create something protectable?
J.D. Houvener:
Let’s start with the easiest scenario.
Suppose you’re an aerospace engineer, and your employer asks you to solve a specific engineering problem.
You develop a new design that reduces drag on an aircraft.
Who owns that invention?
Generally speaking, the employer does.
Most employment agreements include intellectual property assignment clauses requiring employees to transfer ownership of inventions created within the scope of their work.
David Bosland:
Even without an employment agreement, that’s usually a straightforward case.
You’re using company equipment.
You’re working under company direction.
You’re solving a company problem.
Under those circumstances, ownership usually belongs to the employer.
J.D. Houvener:
The situation becomes more complicated when an invention isn’t directly related to your job.
Several factors become important.
Did you use company equipment?
Did you use company software?
Did you develop the idea during work hours?
How much control did your employer have over your work?
David Bosland:
Control is a significant factor.
Can your employer tell you exactly how to complete your work?
Or are you operating independently?
Independent contractors often have much more flexibility than employees.
That’s why contracts become incredibly important.
If you’re a contractor, clearly establish ownership rights in writing.
Don’t assume you’ll automatically retain ownership.
J.D. Houvener:
If you’re creating something outside your job responsibilities and want to protect it independently, you should separate the project from your employment as much as possible.
Work on your own time.
Use your own equipment.
Avoid using company resources.
Keep the invention unrelated to your job description.
David Bosland:
And don’t underestimate trade secrets.
Just because an employer decides not to pursue a patent doesn’t mean the information isn’t protected.
They may intentionally choose trade secret protection instead.
Waiting several years after leaving a company doesn’t automatically eliminate your obligations.
Understanding what information belongs to a current or former employer is critical.
J.D. Houvener:
Another interesting question came up.
Suppose an employer doesn’t want to file a patent application.
Can the inventor pursue one independently?
The answer becomes much more complicated.
Confidentiality agreements and trade secrets can create additional legal issues.
Even if you’re technically allowed to file, you could still create problems by publicly disclosing information your employer considers confidential.
David Bosland:
Another fascinating question involves attribution.
Can an inventor remain anonymous?
Generally speaking, patent law requires inventors to be identified.
You can’t simply file a patent application without naming the inventor.
That raises some interesting questions.
What if someone doesn’t want their name associated with an invention?
J.D. Houvener:
Think about controversial industries.
Pharmaceuticals.
Reproductive medicine.
Defense technology.
There are certainly situations where an inventor may prefer not to have their name publicly connected to an invention.
But patent law requires inventors to be identified.
David Bosland:
That leads us into broader discussions about privacy and publicity rights.
People have rights associated with their identity, image, likeness, and reputation.
Those issues become even more important in today’s creator economy.
Influencers, entrepreneurs, and business owners increasingly depend on their public identity as part of their business.
J.D. Houvener:
So what advice would we give an employee who wants to develop and protect an independent invention?
My advice would be simple:
Work on your own time.
Avoid company equipment.
Keep the project separate.
Make sure your employer isn’t directing the work.
David Bosland:
And if possible, have an open conversation with your employer.
Transparency can help avoid misunderstandings.
Separate laptops.
Separate accounts.
Separate documentation.
Create as much distance as possible between your side project and your employment.
J.D. Houvener:
That’s exactly what I did at Boeing.
I completed a conflict-of-interest disclosure.
I explained that I was starting a separate business that wasn’t related to my engineering work.
Being transparent often works in your favor.
Patent and Trademark Q&A Highlights
The conversation also included several audience questions.
Provisional patent applications:
J.D. explained that inventors should carefully review any USPTO notices requesting additional fees and ensure they’re legitimate.
Trademark registration:
David emphasized that trademark rights come from use, not registration.
Before spending money on branding, marketing, or advertising, businesses should first conduct a comprehensive trademark search.
Building prototypes:
J.D. reminded inventors that a working prototype isn’t required to obtain a patent.
An invention can often be protected using detailed descriptions and drawings.
Avoiding patent infringement:
The discussion highlighted the importance of patent claims.
Patent rights are defined by the claims, and avoiding infringement often requires a careful, element-by-element analysis.
Final Thoughts
Inventing while employed doesn’t automatically mean you lose ownership.
But it does mean you need to be careful.
Employment agreements, confidentiality obligations, patents, trade secrets, and company resources can all affect intellectual property ownership.
When in doubt, speak with an experienced intellectual property attorney before moving forward.
Sometimes a short conversation can prevent years of expensive legal problems.
Thanks for joining the Bold Inventor Show.
As always:
Go big. Go bold.