If you’re like millions of Californians, you work. And, if you’re like millions of Californians, you have interests and projects that overlap with your work. You may be inventing new processes or products in your field of expertise. You may spend your free time on writing, music, artwork, or other forms of expression. Or you may be crafting logos and slogans related to your side hustle.

When you’re a creator and an employee, challenges can arise. Who owns your intellectual property – you or your employer? An experienced California intellectual property lawyer can help you answer that question and protect your hard work. 

Legal Protections for Intellectual Property

In the US, intellectual property typically falls into one of three categories: copyright, trademark, and patent law. 

Copyright protects creative or expressive works “fixed in a tangible medium of expression.” This broad definition covers a wide range of creations. Copyrights in the US are managed by the US Copyright Office.

Trademark protects logos, slogans, and other distinctive items used to identify a brand and communicate the source of goods or services to customers. Trademarks in the US are managed by the US Patent and Trademark Office (USPTO). 

Patent protects invented products, processes, and designs as applied to a manufactured item. The USPTO also handles patent applications and issued patents. 

Each of these forms of intellectual property has its own general rules about ownership – and its own forms for transferring ownership from a creator to their employer. Disputes between employees and employers can thus become complex issues. 

When Your Employer Legally Owns Your Intellectual Property

Generally speaking, copyrights and patents are owned by the creator of a work. Trademarks are typically owned by the first party to use the mark in commerce. 

There are several means by which an employee can transfer ownership of intellectual property to their employer, however. These include:

• Assignment of Invention. Under an assignment of invention, an employee “assigns,” or grants, ownership of the employee’s inventions to the employer. The employer becomes the legal owner of any inventions the employee develops. 
• Work for Hire Agreement. Like an assignment of invention, a work-for-hire agreement states that any creative or expressive works an employee creates become the property of the employer. The employer owns the copyright in these works and the rights secured by that copyright. Work for hire agreements are especially important when retaining independent contractors (IC) given that the IC will retain full copyrights to them without a written agreement to the contrary. 

Both an assignment of invention and a work for hire agreement apply only to work the employee does while on the job. They do not apply to inventions or creative works the employee makes on their own time. 

A third type of transfer agreement is the patent assignment agreement. In a patent assignment agreement, the employee already owns a patent. The agreement transfers the legal ownership of the patent to the employer. Such agreements may also cover items closely related to the patent itself, like blueprints and utility models. 

Some employers include one or more of the above agreements in their standard contracts or employee paperwork. Some employees sign these agreements without reading them thoroughly or without understanding their impact on the employee’s future creative work. Employers will typically have their employees sign an employee invention assignment and confidentiality agreement (EIAC) to retain their rights to inventions (also known as proprietary information and invention assignment (PIIA) and confidential information invention assignment (CIIA). An experienced lawyer can help you determine if you’re under such an agreement and, if so, how it applies to the work you have done to date.

Protecting Your Intellectual Property Without Quitting Your Job

Some employers are relatively uninterested in the creative works or inventions their employees develop on the job. Others are keenly interested and do their utmost to assign themselves ownership of employees’ efforts. Here are three ways workers can protect their ability to create without sacrificing their jobs or careers:

Read everything. Read every contract or agreement before you sign it. Many agreements assign ownership of intellectual property to the employer for any item made on company time, on company property, or using company resources. Talk to an experienced lawyer to better understand the contents of any agreement you’re handed.

Separate your work and creative time. Whether you’re writing a novel or inventing a new tool, keep your work life and creative life separate. Leave your notes at home. Don’t use company time, workspaces, Internet connections, or equipment to work on your creative endeavors. Employers who can show no connection to your creative works will have great difficulty proving they should own those works. 

Keep records. Keep track of where you work on your creative projects, when, and with what tools. Where applicable, choose software that keeps automatic time, date, and location data. These records can help you demonstrate you weren’t working on company time or with company tools. 

Where to Turn for Help

If you’re facing a conflict with your employer over ownership of intellectual property, don’t wait: Talk to an experienced California intellectual property lawyer today. The team at Cohen IP is here to help.