My response:
The law looks on an invention as the property of the one who conceived, developed, and perfected it, and establishes, protects, and enforces the inventor’s rights in his or her invention unless he or she has contracted away those rights. [Banner Metals, Inc. v Lockwood (1960, 2nd Dist) 178 Cal App 2d 643, 3 Cal Rptr 421]
Although the existence of an employment relationship may give rise to certain rights in the employer with respect to an employee’s invention, the mere existence of an employer-employee relationship is not, in and of itself, sufficient to entitle the employer to partake of the employee’s inventive genius. [Aero Bolt & Screw Co. v Iaia (1960, 2nd Dist) 180 Cal App 2d 728, 5 Cal Rptr 53; Banner Metals, Inc. v Lockwood (1960, 2nd Dist) 178 Cal App 2d 643, 3 Cal Rptr 421]
Thus, a person, by merely entering into an employment requiring the performance of services of a noninventive nature, does not lose his or her rights to any invention that he or she may make during the employment even though the employment may have furnished the employee the opportunity or occasion for the conception of an idea that may lead to a patent, and even though the rendition of services in the course of his or her employment may have so enhanced his or her mechanical skill, scientific knowledge, and inventive faculties as to enable him or her to develop and perfect the idea into a patentable article. This is true even if the patent is for an improvement on a device or process used by the employer or is of such great practical value as to supersede the devices or processes with which the employee became familiar during his or her employment. [Banner Metals, Inc. v Lockwood (1960, 2nd Dist) 178 Cal App 2d 643, 3 Cal Rptr 421; see also Aero Bolt & Screw Co. v Iaia (1960, 2nd Dist) 180 Cal App 2d 728, 5 Cal Rptr 53 (employer not entitled to assignment of employee’s patent because employee was originally employed as order clerk; employee conceived invention and disclosed it to employer’s manager, who told employee it was impractical; employee on his own time and at his own expense designed, developed, and reduced to practice invention disclosed in patent; employer did not reimburse employee for development costs; there was no contractual obligation to assign patent to employer; and employee was not hired to invent)]
Moreover, the discovery of an invention by an employee during the course of his or her employment and through the use of the employer’s equipment, materials, and labors does not deprive the employee of his or her invention if the employee was not hired to make inventions, although the employer may have a shop right in the invention that gives the employer a nonexclusive irrevocable license to use the invention. [Banner Metals, Inc. v Lockwood (1960, 2nd Dist) 178 Cal App 2d 643, 3 Cal Rptr 421]
An employer, however, is entitled to an assignment of an employee’s patent rights if the employee was hired to invent and is successful in doing so during the term of employment. [Aero Bolt & Screw Co. v Iaia (1960, 2nd Dist) 180 Cal App 2d 728, 5 Cal Rptr 53; Banner Metals, Inc. v Lockwood (1960, 2nd Dist) 178 Cal App 2d 643, 3 Cal Rptr 421; for discussion of assignment of inventions to employer, see § 70:26] An employer is also entitled to an assignment of an employee’s patent rights if, with certain exceptions, the terms of the employment contract so provide. [Aero Bolt & Screw Co. v Iaia (1960, 2nd Dist) 180 Cal App 2d 728, 5 Cal Rptr 53]
Apart from any other consideration, however, an employer has no rights in an employee’s invention when the employer rejects the invention as impractical. [Banner Metals, Inc. v Lockwood (1960, 2nd Dist) 178 Cal App 2d 643, 3 Cal Rptr 421]
IAAL
