How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers

10.2 HIRED-TO-INVENT AND SHOP RIGHTS

An exception to the general rule that an inventor owns his invention is the hired-to-invent doctrine. This doctrine states that, even in the absence of an assignment agreement, an employee is presumed to have assigned any inventions an employer specifically contracted for, to the employer. For example, an employee who is hired specifically to build a new digital fuel injector for Ferrari is presumed to have assigned this invention to Ferrari under the hired-to-invent doctrine, even if Ferrari forgets to put an assignment clause in his employment contract. The assignment means that Ferrari has all rights to the invention and the inventor has no right to make, use, sell, or import his invention. On the other hand, if an employee who works for Ferrari comes up with a brand new assembly line configuration, this patentable process may not be automatically assigned to Ferrari, because the invention may not have been specifically contracted for and thus the hired-to-invent doctrine would not apply. The hired-to-invent doctrine has similarities to, and is sometimes confused with, the work-made-for-hire doctrine, which is applicable to copyright.

This example leads us to a second exception to the general rule that inventors have sole ownership of all rights to their inventions: the “shop right.” Under the shop right rule, an employee who uses his employer's resources to create something he was not hired to invent owns his invention; however, his employer ...