Do you work for the government? Here are the ground rules for invention ownership.
Federal law provides that all rights to inventions created by federal employees (whether civilian or military) belong to the government if the invention was:
- made during working hours, or
- made with the government’s resources, including money, facilities, equipment, materials, information, or the help of other government employees on official duty, or
- directly related to the inventor’s official duties or made because of those duties. (37 C.F.R. § 501.6.)
If you’re a federal employee, you can forget about owning any invention that falls within these rules. But there is one exception: If the government does not plan to file a patent application for the invention or promote its commercialization, it must allow the employee-inventor to retain ownership.
If you are able to keep ownership (either because the three criteria listed above don’t apply or the government lacks interest in the invention) the government is entitled to a nonexclusive, irrevocable, royalty-free license in the invention with power to grant licenses for all governmental purposes.
If the government obtains ownership of your invention, you have some solace. Federal law provides that, if the government licenses the invention and earns money from it, it must give 15% of the money to the inventor. This is more generous than most private companies are with their employee-inventors.
None of these rules apply to the Department of Energy, Tennessee Valley Authority or U.S. Postal Service.
Many states have laws similar to the federal government’s. For example, Connecticut law provides that the state obtains ownership of any state employee invention (1) conceived during the employee’s job duties; or (2) that emerges from any state research or development, or other program; or (3) that was conceived or developed wholly or partly at state expense or with its equipment, facilities or personnel. If you’re a state employee, you need to examine your state law to determine its patent ownership policies.
If you are an independent contractor who contracts with the federal government, your ownership situation is brighter than that of government employees. Federal agencies may waive or omit patent rights when awarding government contracts (although there are some exceptions for space research, nuclear energy or defense). If you are contracting directly with the federal government (that is, you are not working for the federal government through a private company), then you should ask about patent ownership at the time of contracting. You may be able to retain patent rights to a government sponsored invention. If you are working for an employer who has contracted with the federal government and you want to assert patent rights: (1) your employer would have to retain patent rights from the federal government; and (2) you would have to have some basis to assert your claim to patent rights, as discussed in the previous sections.
Portions of this article are derived from What Every Inventor Needs to Know About Business & Taxes by Attorney Stephen Fishman.
For assistance with the preparation and filing of a provisional patent application, see Nolo’s Online Provisional Patent Application.