It’s the Law: Employer owns invention created on company time

Q: I work for a large recreational vehicle dealership. Part of my job involves creating new or custom parts which are sold by our company. I recently invented a new mirror system, which makes backing and parking a lot easier. My employer claims ownership and that I have no rights to the invention. Since I invented it, isn’t it mine?

A: A recent Florida case addresses a situation similar to yours. In that case, the worker was employed by a ski boat manufacturer. His job included designing new products. The worker was working on expanding interior space of a particular boat, which led him to design an overhead structure, which his employer liked. The employer had a prototype built and opted to seek a patent for what was called a wakeboard tower.

The employer got the worker to sign a number of assignments and release of rights and after the first patent was awarded, the worker sought to undo the assignments and claim ownership of the patent. The worker’s primary claim was that the company defrauded him.

The court explained there is a presumption an inventor owns his invention and with that patent rights, even where an invention was conceived or created during the course of employment. However, the law also recognizes that employers may have an interest in the creative products of their workers. In words of the court, employers may claim a worker’s inventive work “where the employer specifically hired or directs the worker to exercise inventive faculties.”

The first issue in your case is the terms of your employment arrangement. Were you employed to “exercise inventive faculties?” If so, your employer may have a valid claim to your inventive work.

Next step in analysis is to determine if your employment contract specifically or impliedly assigns patent rights to your employer. Early Florida cases held that an employer could not claim the patent of a worker unless the employment contract by express term or unequivocal inference shows the worker was hired for the express purpose of producing the thing patented. If employment is general and the invention was incidental, the employer cannot claim the patent. The employer has the burden of proving that employment was specifically for purpose of making the invention.

The court in the wakeboard case applied that test. It found that all of the evidence regarding the employment arrangement was that the worker had been hired for the purpose of creating new products, including the wakeboard tower in dispute. The worker’s primary duty was to design items that would improve the employer’s boats. The tower was developed on company time, the employer paid for a prototype and the worker never objected to the employer’s actions or to assigning his rights to the employer. The worker also never requested anything more than his normal compensation as a result of inventing the tower.

The worker argued that he had never been specifically asked to design a wakeboard tower. However, the court found the tower fell within the category of things the worker was supposed to do, which was to improve the employer’s boats.

The court went on to find that the employer had not defrauded the worker in any respect, as there was no evidence of misrepresentation or that the employer had taken advantage of a confidential fiduciary relationship with the worker. The employer was awarded the patent right.

As you can see from the foregoing, terms of your employment contract and facts surrounding your employment will be determinative of any claim you may have to the mirror system you invented. In the wakeboard tower case, one of the factors considered by the court was delay of the worker in pursuing his claim and failure to object during the course of patenting. Because delay may harm your case, I suggest that you consult an experienced attorney as soon as possible to review the specific facts and circumstances of your employment arrangement.


William G. Morris is a lawyer with offices at 247 N. Collier Blvd., Marco Island. The column is not intended to be legal advice for specific circumstances. General questions can be sent by e-mail to or by fax to (239) 642-0722. Read other columns at

© 2008 All rights reserved. This material may not be published, broadcast, rewritten or redistributed.

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