Who Owns Employee-Created Invention

Dear Rich: This is a question related to the ownership of the invention between the employer and employee. I was employed by a company and I created an invention at work. The product that I invented was not related to any company business nor did I design the product using any knowledge that I acquired from the job; I just used the computer at work. In its program guidelines, the company said that if the invention was company business related, the company own the right although if the company was not interested in pursuing, it would release it and give the right back to the employee. If the project was not related to the company business, but the company was interested, then it would negotiate with the employee as to how two parties work together. If it was not interested, then the employee was free to do whatever he wanted.The employment agreement did say that if the employee uses any company resource to create anything, the company owns the rights. I left the company shortly after and a few months later, the company came back and proposed that we jointly submit the invention to a large corporation. They did not want to put any money in patenting. Without IP protection, I was not willing to go along. I told the company that I wanted to pursue the invention further on my own. A few days later, I received two documents that I requested --  a signed NDA and a letter of release, stating that I am the sole legal owner of the invention and that the company will not claim any legal right in the future: Is it safe for me to say that I now truly own the legal right of my invention (if I get the patent)? It seems that the guideline somewhat contradicts the terms in the employment agreement. My assumption is that the letter release should override the employment agreement.
Long Question; Short Answer Dept. You need to see an IP attorney. We believe the letter granting all rights will trump prior agreements but we couldn't say for sure without looking at the papers. If you're still interested in patenting the invention, you need to confirm your ownership and you also need to check your deadlines particularly if the invention has been disclosed or published. Here's a collection of articles that may help you sort out ownership issues and here's a previous entry relevant for California inventor-employees.
BTW, speaking of inventors, today (actually yesterday) marks the one-year anniversary of the America Invents Act and seven provisions of the AIA go into effect: inventor's oath or declaration; preissuance submissions; supplemental examination; citation of patent owner claim scope statements; post grant review; inter partes review; and covered business method review. Read more about it at our AIA timeline.

Columnist Wonders: Who Owns My Column?

Dear Rich: I recently left my position as editor of a weekly newspaper. During my 24-year stint at the paper I wrote a popular column and won many national and state awards. I am considering writing a book that would consist of a compilation of some of my columns along with personal recollections. I am in the dark as to what rights I have to my columns and whether I can re-publish them. The newspaper owners have been running a small copyright insignia for many years but for about the first 10 years of my employment, they did not. If you could shed some light, I'd appreciate it. Because you were editor, we're going to assume that you were an employee of the newspaper, not an independent contractor. In that case, the newspaper owns all rights to your columns. (We're assuming the columns were created in the course of your employment, not on your own time). If they were created on your own time (and away from work), you may have a claim to them (unless your employment agreement is to the contrary).
The copyright notice. If you've been writing columns since 1988, it probably doesn't matter whether the copyright notice was included. It certainly doesn't matter for any columns published after March 1, 1989. (No notice was required after that date.) If the notice was omitted from columns published before that date, the works could still be covered by the newspaper's blanket notice, typically included on an editorial page or some similar page.
What should you do? We can't predict the results but we would hope that the newspaper wouldn't have any objection to your reproduction of the columns in your book. (Perhaps you can argue that you're promoting the goodwill of the paper.) They don't have to give up the copyright (although you could ask for that) in order for you to use the columns in your book. If they give permission, get it in writing. It can be short and simple -- something to the effect of "We license to you the right to reproduce XX columns in your book tentatively titled "My 24 Years as Editor." If you're looking for a more detailed agreement, check out our book, Getting Permission.

Does Employer Have to Furnish Copy of NDA to Employee?

Dear Rich: Is it required by law that employers provide a copy of the signed nondisclosure agreement to the employee after they have signed it? In most states, yes, the employer must furnish a copy of each signed agreement including NDAs. If the employer doesn't provide a copy at the time of execution, then the employer usually must allow the employee to view and copy the agreement upon written request. These laws, sometimes referred to as "access to personnel records" legislation differ from state to state and you can find more about your state's law in this article.

When Inventors Hire Employees

Dear Rich: I patented a car accessory and outsourced the manufacturing. Now I'm getting ready to distribute it and I'm considering hiring a cousin to manage distribution. What kinds of concerns should I have about hiring someone? Our suggestions have to do with paperwork and taxes. If you're providing any confidential or proprietary information -- or alternatively, if your cousin is creating any proprietary information -- you'll want to have an appropriate independent contractor agreement. (You can read the details about inventors and employees here.)  As for taxes, here is an article explaining what's needed when inventors hire employees. (And here's more information on inventors and taxes.) Also, we hope you and your cousin are a good match because one thing they say about hiring relatives is that they're easy to hire and tough to fire.