Intellectual Property Lawyers for Springfield, Illinois

Without seeing the handbook it would be difficult to answer your question. Generally, what an employee creates for the Company is Company property, unless you have an agreement with them that states otherwise. It would also be helpful to know if you are an employee or independent contractor. Sometimes Company's give employee handbooks to independent contractors but the classification of whether you are an employee or independent contractor is important to this analysis.

Hi, Yes, intellectual property created by you as an employee, within the scope of your employment, under a work-for-hire agreement, probably belongs to your employer. To learn more about your rights under the agreement and any exceptions, you should consult with a qualified attorney.

To protect your interests and maximize the value of your invention, a well-structured Patent License Agreement should include several key provisions and considerations. Here are some essential elements: Grant of License The grant clause is crucial as it defines the scope and extent of patent rights given to the licensee. Be specific about: -Type of license (exclusive or non-exclusive) -Geographic territory covered -Market segments or fields of use -Duration of the license Clearly outlining these aspects helps prevent misuse and ensures you retain control over your invention's application. -Financial Terms -Royalties and Fees Establish a clear compensation structure that may include: -Upfront fees -Ongoing royalties (consider tiered rates based on sales volume) -Minimum annual guarantees -Milestone payments Ensure the royalty calculation method is well-defined, whether based on net sales, profits, or another metric. -Payment Terms -Specify payment frequency (e.g., monthly, quarterly, annually) and reporting requirements. -Term and Termination Define the agreement's duration and include provisions for: -Early termination conditions (e.g., breach of contract, bankruptcy) -Renewal options -Effects of termination on rights and obligations Intellectual Property Protection Include clauses that: -Affirm your ownership of the patent -Prohibit the licensee from challenging the patent's validity -Outline responsibilities for maintaining and enforcing the patent -Address ownership of improvements or modifications to the invention Performance Obligations Consider including: -Minimum sales targets -Marketing commitments -Development milestones These ensure the licensee actively commercializes your invention. Confidentiality Protect your sensitive information with robust confidentiality provisions, specifying: -What information is considered confidential -How it can be used -Duration of confidentiality obligations Sublicensing Rights If allowing sublicensing, clearly define: -Conditions under which sublicensing is permitted -Your approval rights for sublicensees -How sublicense revenue will be shared Quality Control If your patent is associated with a trademark, include provisions for: -Inspecting and approving the quality of goods before sale -Maintaining quality standards -Indemnification and Liability Include clauses that: -Protect you from legal claims arising from the licensee's use of the patent -Define limitations on liability for both parties -Dispute Resolution Specify mechanisms for resolving conflicts, such as: -Mediation -Arbitration -Litigation Governing law and jurisdiction By carefully addressing these key provisions and considerations in your Patent License Agreement, you can better protect your interests and maximize the value of your invention. Remember to tailor the agreement to your specific situation and consider seeking legal counsel to ensure all aspects are properly covered.

A business has multiple options for protecting its intellectual property when working with an independent contractor. For a few examples: 1. A "work made for hire" agreement or clause can establish that the business is the owner of intellectual property that the independent contractor creates. 2. A confidentiality or non-disclosure agreement or clause can require the independent contractor to maintain the confidentiality (and limit or prohibit the independent contractor's disclosure) of the business' confidential or proprietary information. This can include the business' trade secrets (one type of intellectual property), as well as other information that might not rise to the level of trade secrets. 3. A non-competition agreement or clause can prohibit the independent contractor from using, or allowing someone else to use, the business' intellectual property to compete with the business. An independent contractor agreement with intellectual property considerations could implicate various federal and state-specific laws. A knowledgeable North Carolina attorney should be able to help you with an independent contractor agreement that complies with all the applicable laws. To ensure that you have a clear understanding of the intellectual property rights associated with your independent contractor agreement, you should consult with a knowledgeable attorney.

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.