Illinois Assignment Question

[tlcff8]

I work in the state of Illinois and they have the Employee Patent Act, the clause that I am interested in is the following, and the example of my idea will follow.

Excerpt from (765 ILCS 1060/) Employee Patent Act.

(3) If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.

So my question is this, lets say I work for a baker and the baker purchases all of the raw ingredients to make its cookies.  In conversations with other suppliers for a partial flour replacement, I get an idea of how to combine the flour and partial flour replacement to improve its use as a combined ingredient and thus reducing the total amount of flour. If this is completely done on my own time what is the likelyhood that my employer could have recourse saying it either (a) relates to the business or (b) results from any work performed by the employee for the employer?

Thank you.

[Oh, Crud]

I work in the state of Illinois and they have the Employee Patent Act, the clause that I am interested in is the following, and the example of my idea will follow.

Excerpt from (765 ILCS 1060/) Employee Patent Act.

(3) If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.

So my question is this, lets say I work for a baker and the baker purchases all of the raw ingredients to make its cookies.  In conversations with other suppliers for a partial flour replacement, I get an idea of how to combine the flour and partial flour replacement to improve its use as a combined ingredient and thus reducing the total amount of flour. If this is completely done on my own time what is the likelyhood that my employer could have recourse saying it either (a) relates to the business or (b) results from any work performed by the employee for the employer?

Thank you.

Hi tlcff8.  Back up a step and fill in a blank for us.  Do you have an employment agreement with your employer (caller it "Bakers, Inc.") that contains a provision requiring you to assign inventions to Bakers, Inc.?   

The answer to that question will cause a decision tree split. 

If "Yes", then the statute section you've quoted applies, and assuming the employment agreement itself is in accordance with the statute then... ...sorry, but my off-cuff thought is that Bakers, Inc. should certainly have good reason to argue that both (a)(i) and (b) apply.  (Think about the policy behind these sorts of statutes - absent your employment at Bakers, Inc., you'd have no clue about how to adulterate flour to make tasty pastries with cellulosic fillers (for example)).

If "No", then the statute you've quoted doesn't apply at all, but you still probably need to see if Illinois has other provisions covering you.  That is, if you have no clause in an employment contract requiring you to give up relevant inventions to your employer, are there other statutory (or court-made) provisions that say that nevertheless, the employer may have some rights (possibly just shared rights) to the invention?  (In some jurisdictions, there can be shared (non-exclusive) rights back to the employer if the invention relates to the job you do for them and you otherwise would not have come up with this invention "but for" your employment there (see policy discussion above)).

[tlcff8]

I agree with the logic you have presented. Yes I have an assignment provision however after doing research on that it appears that the verbiage of this document is very important in regards to whether or not you are required to assign the rights or if it is understood you will. The example of this I found was the Stanford university vs. Roche case. 

So you don't feel that I could argue based upon my schooling that I would have the knowledge as to why I know how to  do this?  To me the baker is not in the business of making flour they are in the business of making cookies. Plus once the idea came to me all research on it has been done on my own time and equipment, I don't see how combining two readily available materials in some means that they do not produce or plan to produce can be considered part of the business.

Thanks for quick response.

[Oh, Crud]

I agree with the logic you have presented. Yes I have an assignment provision however after doing research on that it appears that the verbiage of this document is very important in regards to whether or not you are required to assign the rights or if it is understood you will. The example of this I found was the Stanford university vs. Roche case. 

So you don't feel that I could argue based upon my schooling that I would have the knowledge as to why I know how to  do this?  To me the baker is not in the business of making flour they are in the business of making cookies. Plus once the idea came to me all research on it has been done on my own time and equipment, I don't see how combining two readily available materials in some means that they do not produce or plan to produce can be considered part of the business.

Thanks for quick response.

Welcome.  So as I said, they have arguments to apply to say that the employment contract's assignment provisions apply.  However, you've obviously been thinking (and researching) a lot about this.  (Sorry, I don't have time to review Stanford again but vaguely recall the main thrust was more dealing with Univ. rights to inventions under NIH (Bayh/Dole act) grants???).

In any event, as I said Bakers seems to have some arguments.  But you've already thought out (equally if not better) reasonable contra-arguments as to why 1060 (3)(a)(i) may have weaknesses (it's not their current actual business - they bake, not provide base materials/ingredients).  And by extension, those same arguments should be useful against 1060 (3)(a)(ii) (i.e., to argue that it's really not a reasonably anticipated new business line for a baker to go to extenders/substitutes/ingredients provision (don't know if this is "true", just following your "Baker" hypo)). 

So, while I have no clue about ILL court cases interpreting the statutory scheme, on a reasonable reviewer basis, it seems to me from your facts that your arguments are better than Bakers, Inc.'s potential arguments.   

That leaves 1060(b) ("results from any work performed").  I have had significant heartburn with phrases like "results from", both in statutes and in contracts (where I have had to deal with several disputes).  But again, my inference from your description of the events relating to your conception of the idea makes it (the conception of your idea) seem frankly quite peripheral to your actual work duties, assuming you are either a baker or just a buyer engaged in purchasing ingredients (with no duties relating to development of ingredients).  So here, too, the weight seems to land on your side.

Of course, all the above is kind of like watching a courtroom trial, and trying to form an opinion after the close of the plaintiff's case.  You've only heard the one side of the story (etc. yada yada -  ).


So where do you go from here (also importantly, be sure to check back tomorrow for other people's opinions about things I've missed or where I'm wrong)? 

Here's a question for you.  I work now for a reasonable corporation (and have in the past have worked for same).  Part of our invention disclosure process includes the opportunity for the employee-inventor to disclose the invention but at the same time also to propose (and seek corporate concurrence) that the invention is unrelated to the business mission and therefore the employee's own property.  Do you have any similar mechanism available to you?  (And/or, of course, do you work for a "reasonable" employer?)

One thing you might consider is to go ahead** and file a very well drafted provisional application to your invention, then disclose to the company and get their thoughts on the matter.  This is a good way of "freezing" what are your ideas without having to worry about contamination from potential "add on" of additional ideas from others in your company when they read your invention disclosure and start iterating on the theme (assuming they have a few gray cells to scrub together).

**Caveat - carefully search the invention first, of course.  You may find that you have just "re-invented the wheel" in which case, you've basically got a non-starter anyway.


Another caveat - if you really think you have an invention, you really, really ought to also seek out your own professional advice.  I think you probably already plan to do so eventually (after testing the basic waters here), but I still want to put that out there for the sake of completeness.  And for one final thought - if you do not work for a reasonable employer (and I understand that such do exist), professional counsel can help you decide if instead your best course is to file for patent protection without any notice whatsoever to Baker, Inc., and instead just await their complaint, "if and when".  While I generally think it's better to iron things out ahead of time, I admit there are times when a wait/see approach is advantageous, if you and your legal counsel have good reason to believe you're on the right side of the law.

[tlcff8]

Again thank you for your prompt and thorough response, I appreciate the input.

I was able to obtain the full detailed copy of the agreement that I signed, it states that with the receipt of $1.00 I have signed over all of my rights to intellectual property.  However, I never received this said dollar, and the way it is worded indicates that it is granted to you after signing the document, and not that you receive a dollar for every idea that you submit and ultimately patent.  I have yet to check all of my pay stubs to verify this 100% though, but I do not remember seeing that.

I also remember seeing somewhere else that the provisions of these types of agreements have to be fair.  To me if an idea that was conceived in your head results in millions of dollars of profit and you only get $1.00 that does not seem fair to me.

I should mention that I am an engineer which may preclude me from your previous statements about how the idea could be related to the peripheral areas of my job duties.  In my opinion they are, as I am not directly responsible for this are the idea pertains to.

In my opinion I am surprised a civil liberties group has not claimed that agreements such as these are inhumane.  My thought being that the employer practically owns your brain, as the wording in the contract states that you are required to disclose practically all thoughts that could lead to improvements.  I for one do not like the idea that my employer essentially has control of my mind.  I understand that they are taking the "risk" of running the business, yada yada yada and they are "entitled" to certain things but the brain is the core of what makes each of us human and unique and I think a case could be made that it is almost like they are holding your brain hostage against your will.  This is probably quite a stretch and is more of a rant than anything else, but I wanted to see if anyone else thought it had merit.

Again thank you!

[Oh, Crud]

I was able to obtain the full detailed copy of the agreement that I signed, it states that with the receipt of $1.00 I have signed over all of my rights to intellectual property.  However, I never received this said dollar, and the way it is worded indicates that it is granted to you after signing the document, and not that you receive a dollar for every idea that you submit and ultimately patent.  I have yet to check all of my pay stubs to verify this 100% though, but I do not remember seeing that.

- That is unusual language in an employment contract.  It actually sounds more like language in a patent assignment document (the doc you sign when they are going to file your invention for patent, which officially transfers ownership to them).  I've worked in places where the assignment document mentions that they are assigning the invention over for $1 (and we always paid them the dollar right then). 
- But if this is your employment contract you're talking about, have you ever had a patent application filed with them yet?  It's hard to tell without the actual wording, but it could say that they will pay the dollar out each time one is filed.  Note that most employment contracts basically just say that your employment itself is enough consideration for you to assign your (relevant) inventions to the company (and courts generally have agreed with this approach).

I also remember seeing somewhere else that the provisions of these types of agreements have to be fair.  To me if an idea that was conceived in your head results in millions of dollars of profit and you only get $1.00 that does not seem fair to me.

- That's the way the cookie crumbles, man.  They pay inventors to work for them, and inventors do so.  They invent (using the company's $$$$ to do so) literally hundreds of inventions for each one that makes the company any money.  (Note I am talking about the general case here, not the current idea you have.)

I should mention that I am an engineer ... ... I am not directly responsible for this are the idea pertains to.

- You certain that the employment contract doesn't say something about idea "relevant" to their business?

I for one do not like the idea that my employer essentially has control of my mind. 

- Well, I generally avoid this sort of problem via the use of a tinfoil hat.

I understand that they are taking the "risk" of running the business, yada yada yada and they are "entitled" to certain things but the brain is the core of what makes each of us human and unique and I think...

- Just why did they hire you?  It was for your brain, right?  You're a brainy engineer.  They wouldn't be paying you the big bucks if you were a brainless burger-flipper, you know.

...and I think a case could be made that it is almost like they are holding your brain hostage against your will.  This is probably quite a stretch and is more of a rant than anything else, but I wanted to see if anyone else thought it had merit.

- It's not against your will.  You entered into the relationship willingly.  That said, I don't necessarily disagree with you - if your employment agreement truly says they own all ideas you come up with, related to your work or not, related to their business or not, then they may have a problem under your law.  If you think your idea may amount to something big, it might be worth your while to spend a few hundred bucks talking to an attorney who focuses on employment law.  (Sorry, don't happen to know any of those myself.)

- I was joking about the tinfoil hat thing, by the way.    

[MYK]

- I was joking about the tinfoil hat thing, by the way.   

They are properly called AFDBs, or "Aluminum Foil Deflector Beanies".  lrn2terminology.

[RTLor]

They were doing an interview with some Illinois residents and one of them commented that theyd have to build a gubernatorial wing on the state penitentiary.  And then he laughed hollowly.