Keys to the subject: Know your rights. Not all situations favour the employer when it comes to claiming intellectual property created in the workplace or with the company`s resources. Although there is no case law on this point, an employment contract in Oregon may require the worker to award all inventions and patents that he designs and develops during his employment, regardless of the time, place and purpose of the invention. Indeed, at least one Court in Oregon has stated that the place and timing of the design of the invention should not be removed from whether an employee or the owner of the employer is the invention, because it is difficult to understand how a worker can cut his mind as he pleases – that is, think only during the hours of noon or night and then pretend that he did not work for the company at that time to whom the idea opens. Mainland Indus., Inc., 58 or about 591. On the other hand, it is possible for an Oregon court to find that a provision that requires the transfer of all the worker`s ideas – regardless of the extent of the employer`s business and the relationship between the employee`s idea and the employer`s affairs – is excessive and unacceptable. Since the employment contract is so important to protecting your company from damage to your intellectual property or future litigation, it may be helpful to get the help of an intellectual property lawyer to develop the contract and ensure that it properly covers all your needs. Whether a person is a worker generally depends on the existence of a written employment contract. It is therefore essential to ensure that you keep accurate and up-to-date records of all employment contracts in order to protect the company`s IP addresses created by employees.
In addition, the inclusion of a clause in employment contracts relating to ip ownership may be helpful. When a trademark, work or design is created by a worker in the course of his or her employment, the mark, factory or design is, by default, the property of the employer and the worker under the applicable law, unless there are agreements to the contrary between the employer and the worker. If the worker in question is already employed and the original employment contract does not include intellectual property provisions, a new contractual clause can be obtained in the middle of the worker`s mandate. However, the transfer of intellectual property rights should be accompanied by consideration of the worker, such as future wages. B, in order to avoid questions about the validity of the assignment. If the inventions do not meet the above conditions, they belong to the worker who authored them. However, if the worker makes an invention « related » to his professional activity and the knowledge acquired in the company has had a decisive influence on the company or has used the funds made available by the company, the employer has the right to claim ownership of the invention or to reserve the right to use it. The employee has one month to give the notification to the employer, who has three (3) months to exercise his rights. In the event that the employer does not communicate to the worker his willingness to assume ownership of the invention within the aforementioned time frame, his rights are extinguished, allowing the worker to pursue the patent invitation himself.
If the employer has informed the worker of his willingness to assume ownership of the invention, has not asserted the industrial property rights to the authorities within a reasonable and predetermined time, the worker must assert them on behalf of the employer.