Expert: Kacey Cahill - 12/17/2008

Question
I had a question regarding who owns intellectual property that is developed while employed, under contract, and in school.

I am a contractor working for the US Government.  I’m about to start graduate school and do research.  My tuition will be partially supported by my company.

I’ve heard that any research (intellectual property) you develop while a graduate student belongs (at least partially) to the university if you are under a research assistance ship (contract) with the university.  I’ve also heard stories about people doing personal research during non-work hours and their company trying to claim that they own it because the person was employed.  I’ve also been told flat out that the US Government will have rights to my research, even if they don’t help pay for anything.

So if I invent WizzBangGizmo while a graduate student that is working full time for a contracting company doing work on a US Government contract, who would own WizzBangGizmo?  What kinds of questions should I be asking?

Thank you for your time!


Answer
Patrick.  Great question.  Here is the break out.....

Work you do as "part of your job" while employed is generally the property of the employer.  Where things get grey are two areas: (1) you are not an employee, but an independent contractor -- then the contract usually deals with that (saying it is theirs or partially theirs or yours, etc.  But the burden is generally on them to say it is theirs except where it is obvious -- you were hired to make X, you made X and got paid for it, etc.), (2) you invent the Wizzbanggizmo on your own time (in your proverbial garage. If it is far afield from what you job covers, it is yours, if it is close, then they have an argument that you invented it at work, but just waited to reduce it to practice when you got home.  Many times this situation is covered in a contract as well.  Your best scenario is to get the issue dealt with in your employee agreement, confidentiality agreement, etc. ahead of time - I have seen many people just lay out the ground rules in advance.

US Government -- I am assuming your employer has a contract with the US Government and you are an employee assigned to providing some of those services.  This is tricky.  Government contracts are not my area, but they are usually VERY fulsome on the they own it stuff.  Also, if the company is doing work under a grant, then you have to look at the terms of the grant.  The bottom line is, whether your employer or the US Government own the work you do as an employee for that employer depends on what the document says that governs the relationship.  Although you technically end up in the same scenario as I laid out in the first section, the US Government generally has more muscle to get what it determines that it is entitled to.  So if you are doing stuff at home that is close to what you are doing on the US Gov job (and the Gov document says the government owns everything) then you are running a bigger risk of them asserting ownership.  Again, the best scenario is the set out the terms of who owns what and under what circumstances in your initial agreement.

Graduate School.  ASK.  This is also not my area of expertise (college ownership issues), but many, many schools are setting up separate entities for licensing their developed technology.  So if you work for a professor, it is his or hers (or the entity for whom the professor is working).  If you get a grant and do work, read the terms of the grant -- it will spell it out.  But the college has no grounds to assert ownership over something you thought of while you were sitting in classes that you are paying for, even if you got the idea while you were in class.  The trick, again, becomes if you work for a professor, and then invent a related item one your own time.  This would be factually driven and I would seek advice at the time you come across it.  If it a big concern, discuss it with the professor before your start the work and/or ask to see the grant terms under which the work is being done.

I hope this was helpful, but please keep in mind that this information is being provided for educational purposes and is not intended as legal advice.

Kind Regards,

Kacey Cahill
kacey@kaceylaw.com