Loyola Law School

1
Loyola Law School

• Conference on Employee-Inventor Rights
• September 15, 2006
• Session 2 A panel discussion of various
  corporate and academic models for voluntarily
  sharing the economic value of the invention with
  employees.

2
Panel Introduction

• W. Mark Crowell, Associate Vice-Chancellor for
  Economic Development and Director of the Office
  of Technology Development, UNC, Chapel Hill
• James Laur, Deputy General Counsel, Cedars-Sinai
  Medical Center
• Georgann Grunebach, Assistant General Counsel,
  DirecTV
• Mark A. Flagel, Partner and Head of IP and
  Technology Practice Group, Latham Watkins, Los
  Angeles Professor IP and Technology at Loyola
  Law School.

3
Discussion of Organizational Policies

• Does your organization own all inventions created
  by employees?
• How do you monitor invention disclosures?
• Do you patent everything they disclose?
• Do you have a specific process by which employees
  can disclose new inventions?

4
Money and Sharing

• Do you pay inventors for new disclosures?
• Does your organization license out inventions?
• Do inventors participate in any way in the
  licensing process (or for companies that dont
  license, in the use of the invention)?
• Does your organization have a specific policy for
  sharing royalties with inventors?

5
Other Peoples Intellectual Property

• How do you deal with co-owners?

6
Effect of Policy on Organization

• Do your competitors have comparable
  ownership/invention-reward policies?
• What if you didnt share the wealth with your
  inventors. Would this affect your
  hiring/retention at all?
• What would be the benefits/problems with the
  state mandating some kind of royalty sharing with
  inventors?

7
Hypos

• Your employee discloses a new invention.
• He discloses the blocking IP upon hiring and says
  he intends to continue work on it.
• You find out only after he creates an invention
  at your organization that he also owns,
  personally, a blocking patent.
• Now you find out that the blocking patent is
  owned not by employee personally, but by his
  former employer, your biggest competitor.
• He now tells you that HP employees helped in the
  development of this new invention.

8
Hypos

• 2. Your star employee reveals that she has an
  incredible, earth-shattering idea. She does not
  believe it is at the point of patentability yet.
  She will refuse to work on it further unless you
  promise a certain (higher) share of the
  royalties.
• She claims that she had the idea when she
  arrived. She merely reduced it to practice here.
• She did all the work on her own time, in her
  garage.
• She is a physicist. The invention is a new
  heart-regulating mechanism for surgical recovery.
  
• She is a physicist. The invention is a robot
  vacuum for all household cleaning needs.
• She is a janitor. The invention is a robot
  vacuum for all household cleaning needs.
• She is a janitor. The invention is a new
  heart-regulating mechanism for surgical recovery.
  

9
Hypos

• 3. You find out that your star physicist is
  commercializing the technology she developed
  through her own company, ROBOTOCLEAN. She claims
  you have no rights because although she developed
  it during her employment, she did it on her own
  time, in her garage.
• Does the type of invention matter?
• Does the employees work schedule matter?