Unlocking the Secrets of Invention Assignment and Work for Hire Agreements

Demystifying Intellectual Property Clauses in Employment Agreements

When you're presented with an employment agreement, it's common to come across provisions related to intellectual property, often under the headings of "work for hire" or "invention assignment." While these terms might appear similar, they serve different purposes under copyright and patent laws. Understanding their nuances is crucial before you put pen to paper on your employment contract.

Exploring "Works Made for Hire"

This section of your contract delves into copyright ownership of specific work created during your employment. According to copyright law, when you create something within the scope of your job, your employer retains ownership rights over that creation. However, if the work is produced by an independent contractor, the employer can't claim rights without a written agreement signed by the contractor.

For employees, this provision might seem redundant since employers naturally hold intellectual property rights. However, including such language in contracts serves several essential purposes.

First, it ensures that the employer maintains exclusive ownership over copyrightable works, such as artwork, articles, music, and more. It's vital to note that copyright safeguards the tangible expression of ideas, not the ideas themselves. This distinction is essential because ideas might be subject to trade secret laws or patent applications. A "work for hire" provision becomes necessary when the employer seeks to safeguard all these aspects.

Second, it helps clarify what falls under the scope of employment concerning copyright ownership. This clarification is especially important when job descriptions might be ambiguous.

Navigating Invention Assignment

In many cases, these provisions include language stipulating that you assign all current and future inventions to your employer. Employers incorporate this language for two primary reasons:

To maintain ownership of anything they consider a trade secret or confidential information.
To assert their rights if something created by an employee becomes the subject of a patent application.

These clauses are typically written broadly, encompassing even work an employee might have created before starting their employment. However, employees usually have the opportunity to disclose prior inventions or works to maintain ownership.

Negotiating the Invention Assignment Agreement

If you have the chance to negotiate your employment agreement, consider these factors:

Do you engage in any activities outside of work that involve creating intellectual property? Ensure that the provision only covers ideas and work prepared within the scope of employment and using the employer's resources.
Do you have preexisting work that might fall under the invention assignment provision? Consider requesting the removal of any parts that bring in prior work product.
Does your field necessitate retaining ownership and control over your intellectual property? Certain professions, like academia or specific technical fields, may require retaining intellectual property rights. In such cases, review the terms carefully and seek legal advice.

Sometimes employers won't negotiate these provisions, especially larger ones dealing with multiple employees. However, for some, the boilerplate nature of intellectual property and work-for-hire clauses doesn't always align with the employer's true intentions. If you have concerns, it's always worth asking if there's room to make adjustments tailored to your situation.

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Special Considerations for Independent Contractors and Freelancers

It's worth noting that employers cannot retain copyright ownership for independent contractors without a written agreement. Additionally, the permissible scope of a work-for-hire agreement is narrower for independent contractors, applying only to certain types of creative work. It also cannot cover work created before the engagement.

The company commissioning the work must be specific in their request. This prevents companies from broadly covering all tasks an independent contractor performs. It's also important to be aware that many independent contractors may be deemed employees under Massachusetts law, depending on the nature of their work.

Questions to Ask an Employment Lawyer Before Signing an Invention Assignment Agreement

Before signing a work-for-hire or invention assignment agreement, it's wise to consult an attorney. Here are some essential questions to ask:

How broad is the scope of employment defined in the agreement, and does it cover your outside independent projects?
If you're an independent contractor, how likely is it that the law will consider you an employee under the agreement?
Does the agreement allow you to use your work for portfolio or marketing purposes?
Does the agreement encompass your work before employment?

By seeking legal advice and understanding the intricacies of intellectual property clauses in employment agreements, you can make informed decisions that protect your rights and interests.

Meet Our Employment Lawyers

Emily Smith-Lee is the owner and founder of slnlaw. She is a 1996 graduate of Boston College Law School. She was previously a partner at the Boston office of a large international firm, where she worked for thirteen years before starting the firm that became slnlaw in 2009. She has been recognized as Massachusetts Superlawyer each year since 2013, and in 2018 earned recognition as one of Massachusetts Lawyers Weekly's Lawyers of the Year. She has written a book on employment law: Rules of the Road, What You Need to Know About Employment Laws in Massachusetts. Along with the rest of the slnlaw team, she has helped hundreds of clients navigate, negotiate, or defend against the terms of their employment agreements, including non competes, non solicitation agreements, employment contracts with intellectual property provisions and other restrictive covenants, and executive employment agreements.

Rebecca Rogers: Rebecca is a 2006 graduate of Boston College Law School, and has worked with slnlaw since 2013. She previously worked as an intellectual property litigation attorney for Fish & Richardson in Boston, Massachusetts, and clerked for the Massachusetts Supreme Judicial Court. Rebecca has helped many clients understand and evaluate their non compete agreements and develop strategies for defending against non compete enforcement and negotiating resolution, and understand and navigate other employment contracts.

Jenna Ordway: Jenna is a 2013 graduate of Quinnipiac Law School, and also earned an LLM in Taxation from Boston University in 2015. She has been affiliated with slnlaw since 2011, first as a law clerk and then as an attorney. Jenna has been recognized since 2019 as a "Rising Star" by Massachusetts Superlawyers. Jenna works with employers to develop reasonable and enforceable employee agreements, including non competes, non solicitation agreements, executivev employment agreements and incentive agreements. She has also helped employees understand and evaluate their non compete agreements and develop strategies for defending against non compete and non solicitation enforcement and negotiating resolution.

Elijah Bresley: Eli is a 2014 graduate of Seton Hall Law school, and has worked with slnlaw since 2020. He previously worked for a boutique employment law firm outside of Boston, and then for the Labor and Employment department of a large Boston firm. He also spent a year clerking for the judges of the Superior Court in Hartford, Connecticut. Eli has helped clients both evaluate and negotiate their employment agreements, including non competes, non solicitation agreements, employment contracts with intellectual property provisions and other restrictive covenants, and agreements requiring employee payback of retention bonuses or training expenses. Eli has also defended claims against employees based on employment contracts in state and federal courts.

How We Can Help

Our experienced team of employment attorneys can provide guidance and review your employment agreement to ensure your intellectual property rights are protected and aligned with your career goals. You can use the button below to schedule a call back from a member of our team, or give us a call at 781-784-2322.

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