EDN:
Question:
As a consultant, I know that any invention that I devise while working for a client basically belongs to that client. In that regard, it is no different than being employed by that company. If the company decides not to pursue the invention and does not file for patent protection on it, what are the right steps for the consultant to take to either protect the invention himself, or to offer it to another company?
Expert response from Steve Sereboff, SoCal IP Law Group LLP:
Good question, but let’s start with your assumptions. Whether you are an employee or a consultant, by law you own the inventions when you create them. Smart companies have their employees and consultants sign blanket IP assignment agreements, so that the company will own what you create for them.
The answers to your questions will depend on the agreement. If there is no agreement, then you probably retained ownership of the invention, and you would still have the right to pursue a patent or offer it to another company.
Alas, things are not quite so simple. For example, a non-disclosure agreement might apply. Even if there are no agreements, there is always some risk that the company will challenge you. Is the company litigious? Will they want to make an expensive example out of you? Ultimately, you are probably okay. However, because of the potential costs, you should balance your risk tolerance against the downside and upside.
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