Intellectual property considerations for engineering free agents

11/13/2017
Intellectual property considerations for engineering free agents

By Joe Lampinen

One question often asked by engineers is, “What are my intellectual property (IP) rights when I’m working on a project for a company?”

The answer can depend on your situation. If you are a fulltime employee using facilities and equipment supplied by your employer, the concept of shop right may apply. This means that your employer may have an automatic right (license) to royalty-free use of any IP that you create in the course of your employment.

If you’re a free agent—a contractor, freelancer, or some other form of contingent worker—the legal ownership of IP isn’t always so straightforward. Keep the following considerations in mind, and ask an IP attorney for advice on these issues:

  • Most companies aren’t willing to relinquish IP rights to the inventions of contractors. Generally speaking, companies that pay a fee for your services want to retain the IP rights to your inventions created while working on their projects. In recent legal cases brought by contractors against companies over IP ownership, courts have supported this concept. 
  • Renowned engineers with successful track records as experts in their fields have more negotiating clout. When a company already knows the value an engineer brings to a project, it may be more open to negotiations. One possible arrangement is for the engineer to retain IP ownership rights and license them to the company for a limited period of time (or for a limited scope, scale, purpose, etc.). This is especially practical when the patent holder doesn’t have the manufacturing, sales, or distribution capabilities needed to market the invention.
  • If you’re working with a staffing agency, it’s likely to advise you to consult with an IP attorney concerning your IP ownership rights. Note that in this situation, the staffing agency is your employer and the company is its client. The staffing agency’s legal department will be tasked with ensuring adequate legal documentation regarding your work as a contractor. This can include reviewing and documenting the potential assignment of any IP rights the staffing company might have a stake in as your employer.

It is very common for companies and engineers to sign patent and invention assignment agreements before beginning projects. Do not take this lightly. Objectively evaluate whether you might create a novel and valuable invention during this project. If this is the case and you’re confident you could benefit substantially from that invention, consult with a qualified IP attorney before signing any contract.

It is essential to seek legal advice. Many engineers, especially those in high tech industries, have an IP attorney on retainer to help them negotiate. To avoid legal bills that can run into the thousands of dollars, you can also seek an hourly-based consultation with an attorney.

Disclaimer: The comments in this blog are not intended to provide, nor are they a substitute for, professional legal advice. The reader is advised to consult with a qualified IP attorney.