An employment agreement often includes language that prevents or limits a practitioner from taking ownership of their own intellectual property (IP). This can include IP such as research, inventions, patents or trademarks.
Before joining a practice, practitioners should be aware of a few concepts regarding their IP rights.
The Employer Wants IP Ownership
If the practitioner conducts research, authors a publication, whether an article or paper, or receives a patent, the belief is that they are using the knowledge that they have learned during their employment to do so; in essence, they are utilizing information that they may not have had access to if not for their employment. They may also be using the employer’s facilities, materials and equipment or perhaps they might utilize other professionals who are employed by the practice — which is why the employer may want to have full control and ownership of the IP, and thus, the right to any royalties along with it.
How a Practitioner Can Ensure IP Ownership
To protect the practitioner’s right to their IP, the language in their employment contract is critical. As an example, the contract may indicate that if any IP is prepared or performed outside of the employment, the practitioner will have full right to that intellectual property. This can include authorship, research, patents, trademarks, or anything else that falls under IP. Generally, for this to apply, the employer will not want their employees to utilize other staff members or general patient information related to procedures or results. Furthermore, everything must be done on the practitioner’s own time, not during employment hours, and off the premises of the employer.
If a practitioner would like to conduct research, author articles or create any IP while they are employed, then they should be aware of the language in their employment contract prior to signing. Remember, research, authorship or specialty work, if not part of their employment duties, will most likely be considered an “outside activity” for which they may or not need employer approval. Please see my article here for further information about outside activities.
To protect their ideas, a practitioner should review their employment agreement thoroughly before signing.
Stephanie J. Rodin, Esq.
Rodin Legal, P.C.
Tel: (917) 345-8972
Fax: (917) 591-4428