How to determine if the invention is related to the employer business?

[ali_mos]

What is the name of your state (only U.S. law)? Texas
I am working on an idea after working hours to start a business while I am employed. Also, I am not using any of employer resources and the invention is not related to my job functions. I read my invention agreement and it reads that "any invention which is related to the employer current and future business will be owned by employer even if it's invented after working hours".
My invention is a device that increases heat transfer for heat exchangers. My company is a big provider of drilling equipment from bottom hole to the surface. As far as, I know my company is not in hear exchanger business. My main concern is if my invention is related to my employer business? Is "business" equal to certain products?

 

[quincy]

What is the name of your state (only U.S. law)? Texas
I am working on an idea after working hours to start a business while I am employed. Also, I am not using any of employer resources and the invention is not related to my job functions. I read my invention agreement and it reads that "any invention which is related to the employer current and future business will be owned by employer even if it's invented after working hours".
My invention is a device that increases heat transfer for heat exchangers. My company is a big provider of drilling equipment from bottom hole to the surface. As far as, I know my company is not in hear exchanger business. My main concern is if my invention is related to my employer business? Is "business" equal to certain products?

The agreement you signed with your employer would need to be personally reviewed, to determine who owns the invention.

This "preinvention assignment provision" you mention - one where an employee must assign any created invention to the employer - is not a rare one and the provision almost always favors the employer over the employee. The agreement will often cover any invention that could in any way relate to an employer's current OR future business.

I am not sure about Texas (I would have to look), but some states have now limited the scope of such a provision, to better protect an employee whose invention is found to be created entirely independent of his employer. Where your heat transfer invention would fall, and if it could be seen to relate to the drilling business, is a question mark to me.

 

[justalayman]

What is the name of your state (only U.S. law)? Texas
I am working on an idea after working hours to start a business while I am employed. Also, I am not using any of employer resources and the invention is not related to my job functions.

so, where did you come up with this grand idea concerning heat exchangers?

My company is a big provider of drilling equipment from bottom hole to the surface.

I am not familiar with drilling rigs but when I Google deep well drilling and heat exchangers, there does appear to be a heat exchanger used somewhere in the process.

 

[quincy]

Here is a link to ali_mos' other thread, which is interesting: https://forum.freeadvice.com/patents-104/developing-similar-product-current-employer-products-603484.html

 

[ali_mos]

so, where did you come up with this grand idea concerning heat exchangers?




I am not familiar with drilling rigs but when I Google deep well drilling and heat exchangers, there does appear to be a heat exchanger used somewhere in the process.

The background and science of idea is related to my Phd before my employment. However, the idea was conceived during my employment since I saw some similar applications in drilling. From what I understand from the responses, business is equivalent to all products of a company? My perception was that the business means "market sector" meaning a company just targets some part of market so not any product falls in a company business even if it's used for selling a main product. Anyway, I think I should consult with a native lawyer in this regard.

 

[quincy]

The background and science of idea is related to my Phd before my employment. However, the idea was conceived during my employment since I saw some similar applications in drilling. From what I understand from the responses, business is equivalent to all products of a company? My perception was that the business means "market sector" meaning a company just targets some part of market so not any product falls in a company business even if it's used for selling a main product. Anyway, I think I should consult with a native lawyer in this regard.

Consulting with an IP attorney in Texas can be smart, but you should read the agreement you have with your company carefully first.

Texas does not appear to be one of the states that has imposed restrictions on preinvention assignments.

As to your question, any invention that is developed by an employee during his/her employment (and for X amount of time after termination) must be assigned to the employer if it is related to current and/or future business and/or uses business resources and/or is related to the employee's work. The contract you signed with the preinvention assignment provision is, as I said, favorable to the employer and not to you, the employee/inventor.

Good luck.

 

[justalayman]

ali_mos;3246189]. However, the idea was conceived during my employment since I saw some similar applications in drilling.

so what you are saying is that if not for your employment, you would not have been exposed to the stimulus and general information that would have caused you to contemplate your product, right?


that's generally bad news for you since it is apparent there is something work related about your product.

. From what I understand from the responses, business is equivalent to all products of a company?

that would not be an accurate statement. It can include processes, products, and even business practices.

My perception was that the business means "market sector" meaning a company just targets some part of market so not any product falls in a company business even if it's used for selling a main product

Your perception would not be correct.



.

Anyway, I think I should consult with a native lawyer in this regard

absolutely

 

[quincy]

Prior to consulting with an outside attorney, you should read over all terms of your contract carefully.

It is often part of a contract that you must disclose to your company, in writing and promptly, any of your inventions (or discoveries or whatever else might be spelled out in your agreement) - and it will then often be up to the company (and its legal counsel) to determine whether your invention falls within the agreement's scope.

I agree with justalayman that you do not seem to be in the best of all positions, if your hopes are to retain ownership in your invention.

 

[ali_mos]

Prior to consulting with an outside attorney, you should read over all terms of your contract carefully.

It is often part of a contract that you must disclose to your company, in writing and promptly, any of your inventions (or discoveries or whatever else might be spelled out in your agreement) - and it will then often be up to the company (and its legal counsel) to determine whether your invention falls within the agreement's scope.

I agree with justalayman that you do not seem to be in the best of all positions, if your hopes are to retain ownership in your invention.

Thank you guys for all your comments!

 

[quincy]

You're welcome, ali_mos. Good luck.