Intellectual Property Lawyers for Boulder, Colorado

Hello, I wanted to express my interest in helping you understand your trademark rights and the trademark transfer proposal you received. As brief background, I am a US-licensed trademark attorney and have helped clients in similar situations buy, sell, and otherwise transfer trademark rights through transfer agreements. I can also help you prepare and file a federal trademark registration to protect your unique brand name and logo throughout the US. I'd be glad to set up a brief call to learn more about your business and see how I can help. Thanks for your consideration. Best, Roman Vayner (c) 414.628.9099 (e) rvayner@vaynerlegal.com www.vaynerlegal.com VaynerLegal, LLC

Invention Assignment Agreements usually require employees to hand over rights to any inventions they come up with during their employment. But things can get tricky when the agreement tries to claim ownership of something you created on your own time using your own resources. What’s Generally Enforceable Employers often write these agreements in broad terms, sometimes trying to cover anything you invent while you're employed, even if it’s unrelated to your job. Courts usually uphold fair agreements, but they’ll look closely at anything that seems to overreach. Most states try to strike a balance. If an invention is directly tied to your work or the company’s business, the employer may have a valid claim. But if it’s something truly independent that you built on your own time without company tools or knowledge, you’re more likely to keep it. State Laws That Protect Employees Some states have gone further and passed laws that give employees more protection. California’s Labor Code § 2870 is probably the most well-known. It says employers can’t force you to assign inventions that were developed entirely on your own time without using any company resources. The exception is if the invention is connected to the company’s business, research, or your actual job duties. Other states like Washington, Illinois, Delaware, Minnesota, and North Carolina have similar laws. New York passed its own version in 2023, called Labor Law § 203-f, which follows California’s lead. Most of these laws also require employers to give written notice to employees about their rights. In states without specific laws, courts typically rely on general contract principles and public policy. If a contract tries to claim every idea you’ll ever have, that language probably won’t hold up. But if the invention overlaps with your employer’s field, even if you built it at home, the company could still have a real claim. When Employers Still Have Rights Even with legal protections, there are a few situations where the company can still argue ownership: 1. If the invention is related to the business or current projects. 2. If you used any company tools, software, workspace, or confidential info. 3. If the invention came out of your assigned job duties, even if you worked on it after hours. These carve-outs are broader than most people realize. For example, if you’re a software engineer and your side project uses the same coding language or solves a similar problem as your employer’s product, that could raise red flags, even if you used your own laptop at home. How to Protect Your Own Inventions If you want to make sure you keep the rights to something you’ve created, documentation is key. Keep records of when you worked on it, what tools you used, and how it relates (or doesn’t relate) to your job. Don’t use your work email, computer, or cloud storage. And read your agreement carefully. Some contracts require you to disclose all inventions, even personal ones. Disclosure doesn’t always mean you have to assign it, but it can start a conversation you’d rather avoid. The Shop Right Rule Even if you own your invention, your employer might still be able to use it under what’s called the “shop right” doctrine. This means that if you used company time, tools, or resources, the company may have a free, nonexclusive license to use your invention in its operations. You’d still own it, but you couldn’t stop them from using it. Why Jurisdiction Matters The state where you work usually controls which laws apply to your agreement, not the state where your company is based. That can make a big difference. For example, engineers in California have strong statutory protections. Employees in Texas may need to rely on general contract law instead. The Final Analysis Your best move is to have an employment attorney review your agreement. The details matter, and so does your state's law. A good attorney can explain what's enforceable, help you negotiate better terms (like explicit carve-outs for personal projects), and show you how to protect your own work without violating your contract. If you're looking for this type of guidance, the attorneys on Contracts Counsel are available to help. Whether you need a quick contract review or full representation, you can connect with experienced employment lawyers who understand the nuances of invention assignment agreements in your state.

I can do that. I am an IP lawyer over 20 years experience in this area. I work on SAAS and similar agreements daily.

Yes, it's generally possible to trademark the name of your software, as long as it is not a generic name or descriptive of the product. You should also do a clearance search to make sure no other company is using the same or similar name for similar services. I would be glad to discuss more details and help with the trademark process. Thanks.

The terms of your specific agreement are the most important factors to consider. In general, an invention assignment agreement usually means that an employee gives the company any ideas or inventions they come up with while working. The rules can vary by agreement, but they often cover ideas made during work hours, using company resources, or related to the company’s business. In Texas, an agreement can apply to inventions made outside of work hours if they’re related to the company’s business or came from work the company assigned. In one case, the agreement said the employee had to give up all inventions made during or after regular work hours, whether on or off the job, if they were related to the company’s business or came from work the company assigned. Usually, an invention assignment agreement doesn’t apply to ideas that aren’t related to the employee’s job unless the agreement says otherwise. In Atlas Brick Co. v. North, 2 S.W.2d 980, the court said that the title to an invention wouldn’t belong to the employer unless the agreement said that ideas made and perfected under the employee’s contract of employment belong to the employer. Also, if a discovery is made outside the scope and purpose of employment, it belongs to the employee unless there’s an agreement to give up such inventions to the employer. So, it all depends on the terms of the invention assignment agreement. In the case of Halliburton Energy Servs. v. Axis Techs., LLC, the agreement required the employee to turn over all materials related to inventions created during employment, making them the company’s property. But, if the agreement doesn’t cover certain inventions or if the inventions are made outside the scope of employment without using company resources, the employee might still retain ownership.