Patents: Does my company own every idea I come up with?

Finance, Taxes, Banking, Insurance and Retirement
21
Basically listen to EPMikes post above, and take most of the rest with a pinch of salt (although not all there is also correct). Because he's actually a patent attorney (as am I).

To reiterate:

1) An invention made in the course of your regular work duties belongs to the company. Most likely even if it is in your time and on your equipment in your house. Your extra *crazy* ideas will therefore also probably belong to your employer.

2) The contract has little (but not zero) legal effect. Employers already get inventions in category 1) above. If you invent something that is obviously unrelated to your professional duties it is yours. Even if your contract says otherwise. Contracts do not override your statutory right to an invention.

3) A contract might however be useful in explaining what your professional duties are.

4) German inventions belong to employers too. But inventors based in Germany have to get compensated a proportion of the profits. I think they can file on an application if the employer doesn't want to themselves.

5) what matters is who you worked for at the time of the invention, not the time of filing the patent application. So it's there's forever, even if you move company.

6) In many jurisdictions (not sure if Switzerland is one, as I'm not Swiss qualified - EP Mike might be able to help), you have a legal duty to disclose an invention to your employer. Even if not a formal aspect of patent law it's probably part of your good faith in terms of your contractual relationship with your employer. Not doing it is probably a firing offence if you are caught.

22
This is good advice if you want to get sued for breach of confidence and/or sued for a transfer of ownership.

Basically they pay you to come up with ideas. Saying you own the IP is having your cake and eating it,

23
Incidentally, it's not terribly wise to leave a paper trail on the internet evidencing you don't own the invention if you are planning to nick it.

How many "Jonseys" are there who work in Zurich as an engineer, have been at their present employer for 8 years and have just been involved in patent filing.

24
Previous patent engineer here. The simple answer is "NO, your company does NOT own every idea you come up with"

I know it's a bit late to respond to OP but I still write here for documentation.

First of all the national IP Law in effect is binding the both sides, your contract does a very simple effect in this case.

According to the IP Law in Germany (mostly sure that also in Switzerland and in the most of the world) patent rights belongs to the employer but

the employee(s) must always be reasonably paid in return . That's called "remuneration" and it's calculated based on the potential/actual profit that your company will make/currently makes out of this invention. It means that no company can "confiscate" the ideas of their employees without paying them an extra reasonable amount. It also means that employees can NOT patent their ideas that they developed using the conditions provided by their employers (computers, workplace, their job assignments,... etc.) without notifying them first. If you do so, your employer can use it as a cause for "termination of your employment contract".

The employees are always obligated to notify their employers about the inventions that are closely related with the main business field of the employer (there could be slight changes in the conditions from country to country). No employer can claim rights on an invention of an employee that they have zero contribution and in an area that is not their primary business. If they still want to claim rights, they should pay the employee for it.

Doesn't clear enough? Here are some examples.

Case 1. You work for a household appliances company. You have been assigned to design a refrigerator door. You designed an innovative door that can be patented.

You should notify your employer. If they like the idea, they should calculate a remuneration and pay you reasonably to claim rights on it. Or else (they don't like it, find it not worth patenting or sth.), you are free to patent it by yourself (exceptional cases like bad intentions or disclaiming trade secrets etc. are excluded). Period.

Case 2. You work for a household appliances company. You have been assigned to create an algorithm for the washing machine operation. You also came up with and idea for washing machine door (or refrigerator door, doesn't matter).

You should notify your employer since the invention is still relevant with the business field of your company. Maybe your remuneration can be higher. Exact same procedure applies with the first case. Period.

Case 3. You work for a household appliances company. You have assigned with designing doors. You came up with an idea of / baby diapers / escalator motors / blockchain algorithms in cryptocurrency... anything that is not the business of your company.

You may not necessarily need to notify your employer (national regulations apply). In most of the cases, you can go and patent your idea on your own. Your employer cannot claim any rights just because they basically have given you a computer only. Period.

Case 4 (OP's Case) You quit your job in household appliances company and started working in a competitor. You want to file a patent for an idea that is relevant with your previous employer.

Your new employer can NOT claim any rights since they have ZERO contribution to your patent. You might be (according to the national law) needed to notify your previous employer (since they can claim that they contributed the idea). Then the Case 1 conditions apply: If they claim rights on it, they have to pay you. If not, you can patent your invention by yourself. Period.

Case 5. You quit your job in the household appliances company and you cannot work in a competitor. You still have an innovative idea about refrigerator doors. Case 4 conditions apply. Period.

Any further questions will be gladly answered.

25
Employee remuneration for an invention is a German specific thing, and doesn't occur in any other major markets that I am aware of (I don't pretend to be an expert on Swiss law but I'm pretty sure it doesn't apply here).

26
OK I was editing my post right after your advice but it says "you have passed the time limit" and everything that I wrote was gone.

But the main thing I found is this: Swiss categorizes the inventions in 3 categories:

Service Inventions: Your company gives you a task of designing something and you create a patentable invention out of it. In Switzerland, your company has all the rights for your invention. You get nothing in extra.

Reservable Invention: Your company does not specifically asks you to design something but yet, you have created a patentable invention in a field that is in course of your company's business area. The patent rights are completely yours. If your employment contract specifically includes a clause saying "the company reserves the rights to claim on your inventions" then you need to notify your company first. If your company finds it useful and wants to claim rights on it, they are obliged to pay you (1)(2).

Other Inventions: You have created a patentable invention without any assignment from your company and it is not even in the field of activity of your employer. You have the full rights on your invention. (3)

Accordingly, the cases in Switzerland will be slightly different from Germany as follows.

Case 1.

You work for a household appliances company. You have been assigned to design a refrigerator door. You designed an innovative door that can be patented.

In Germany: You should notify your employer. If they like the idea, they should calculate a remuneration and pay you reasonably to claim rights on it. Or else (they don't like it, find it not worth patenting or sth.), you are free to patent it by yourself (exceptional cases like bad intentions or disclaiming trade secrets etc. are excluded).

In Switzerland: You should notify your employer but you will get nothing in extra.

Case 2.

You work for a household appliances company. You have been assigned to create an algorithm for the washing machine operation. You also came up with and idea for washing machine door (or refrigerator door, doesn't matter).

In Germany: You should notify your employer since the invention is still relevant with the business field of your company. Maybe your remuneration can be higher since you are not assigned to create an algorithm. Exact same procedure applies with the first case.

In Switzerland: Check your employment contract. If there is no specific clause saying that "the company may claim rights on reservable inventions" , you should notify your employer and if your employer likes your invention, they need to calculate a remuneration and pay you . If there is no such clause, too bad for the company, you have the full rights of your invention. (1)

Case 3.

You work for a household appliances company. You have assigned with designing doors. You came up with an idea of / baby diapers / escalator motors / blockchain algorithms in cryptocurrency... anything that is not the business of your company.

Neither in Germany nor in Switzerland you do not necessarily need to notify your employer. You can go and patent your idea on your own. In Germany, your employer cannot claim any rights just because they basically have given you a computer only. In Switzerland, you are protected by the Patent Act Art. 3 (3).

Case 4 (OP's Case)

You work in your company and your employer says that "you should resign your future rights". That's not legal anywhere. Even if you sign it, that does not mean a lot in a court since it's not legal.

You work in the company and your boss says "here in Switzerland company always has the patent rights". It is FALSE. You don't even need to leave your job for having the patent rights of the things that your employer does not assign you to do. It's your employer, not your owner and you are not a slave.

Case 5 (OP's Case)

You quit your job in household appliances company and started working in a competitor. You want to file a patent for an idea that is relevant with your previous employer.

In Germany, your new employer can NOT claim any rights since they have ZERO contribution to your patent. You might be (according to the national law) needed to notify your previous employer (since they can claim that they contributed the idea). Then the Case 1 conditions apply: If they claim rights on it, they have to pay you. If not, you can patent your invention by yourself.

In Switzerland, if you will be assigned in this very specific patent idea in your new company, yes, the company can have the rights and you might be end up with nothing.

Case 6 (OP's Case)

You quit your job and found a new one. You are thinking of many other beautiful ideas that you are not assigned or obliged by your company, yet the ideas are still in line with your new company's business field.

In Germany, you should first notify your current employer and if they are interested in it, they have to pay you.

In Switzerland, you are not even obliged to notify your employer unless you have a specific clause in your contract. The rights are all yours. You can go patent it if you wish.

References

(1) Benhamou, Y., Employees' Intellectual Property Rights in Switzerland, p.381

(2) Federal Act on the Amendment of the Swiss Civil Code, Art. 332

(3) Federal Act on Patents for Inventions

(4) Legal rights of employees’ inventions, Startups.ch

27
Excellent post !

28
The expert and specific advice on patent law in this thread is impressive! I will just add on the other matter, the non-compete clause. Non-compete clauses do have teeth in Switzerland. It's not central to the OP's case (unless the patent matter determines good cause/not good cause separation), but in general, non-competes will stand unless they are worded or aimed too broadly.

There are plenty of other threads on EF about that, but here are some links:

https://www.careerservices.uzh.ch/en...onkurrenz.html

https://www.mme.ch/en/magazine/magaz...pread_opinion/

29
The actual wording of employment law on this issue ( https://www.fedlex.admin.ch/eli/cc/2...377/en#art_332 , non-binding english translation):

Art. 332

1 Inventions and designs produced by the employee alone or in collaboration with others in the course of his work for the employer and in performance of his contractual obligations belong to the employer, whether or not they may be protected.

2 By written agreement, the employer may reserve the right to acquire inventions and designs produced by the employee in the course of his work for the employer but not in performance of his contractual obligations.

3 An employee who produces an invention or design covered by paragraph 2 must notify the employer thereof in writing; the employer must inform the employee within six months if he wishes to acquire the invention or design or release it to the employee.

4 Where it is not released to the employee, the employer must pay him separate, appropriate remuneration to be determined with due regard to all pertinent circumstances and in particular the economic value of the invention or design, the degree to which the employer contributed, any reliance on other staff and on the employer’s facilities, the expenses incurred by the employee and his position in the company.

I would be careful with some of the "cases" listed by wayperson. As with all things legal, there are various interpretations abound. You can of course assign or resign "future rights". That is the very purpose of Art. 322 para. 2: you give your employer an option on inventions you produce in the course of your work for your employer. Also even with respect to "free inventions" some legal commentators argue that you would be required to at least offer these to your employer if they fall within the realm of your employers economic activities and cannot simply monetize them yourself or sell them to a competitor, since this could violate your duty of faith to your employer.

Or to cut a long story short: if the OP considers the IP to be valuable, he should have it looked at by a good IP/IT lawyer with employment law experience. PM if you need any suggestions.

30
Thanks for the contribution Mica. Actually I am not a legal expert in CH neither, but I found it very fruitful to exercise my brain muscles in a previous expertise of mine.

I agree with you in the "Long story short": Yes, the OP should have been looked for a professional IP advice many years ago . Today, I am just listing my opinions to help the other people who finds this thread.

About the " Cases ": these are of course some hypotetical things with a lot of assumptions (good faith, ... etc.), and the final decisions may of course vary in a real court under different sub-conditions. But my aim was to prove everyone that "nobody is nobody's slave - laws are there for to provide equality" (referring to the questions of OP: should I work at nights, should I quit and wait for 5 years, etc. - just to submit a patent application by yourself? Of course you should not!)

A littler longer version of the " long-story-short " is:

I would always notify my employer in Switzerland every time I come up with an invention to stay on the safest side - but yet, know that you still have rights:

Check the 2 things in every time you came up with a patentable idea:

1) Did it arise from the activities that fall under your contractual obligations?

2) Does it fall in the course of work of your employer?

1 is yes --> Service invention. Employer has the rights. You can't claim anything 1 is no, 2 is yes --> Reservable invention. You have the rights. Notify your employer and request a pay.(*) 2 no's --> Other (Free) invention. You have the rights. Yet, you may want to notify your employer.

(*) of course in this case an employee should be reasonable if he/she wants to benefit out of it. In my previous workplace, I had a lot of bad experience about it. In most of the cases, the employees were requesting extreme amounts for a worthless improvement -in some cases which may not even able to be patented- and the company refuses to pay for it, and the greedy employee generally ends up with nothing and blames the system.

Or sometimes the greedy company wants to confiscate every single idea of the employees (in the OPs case) and does not want to pay anything. The employees should ask for advice and be aware of their rights.

Or, the employee wants to patent something that the company wants to keep as a secret, but yet they still don't want to pay anything to the employee. and the things get a bit dirty.

Law is there to show people their rights and gives them a chance to come to an agreement by themselves. But if people can't agree on anything, the way to dispute resolution or court is always open.

About the duty of loyalty , I agreed with you at the beginning, but I also found this:

BENHAMOU, Y., RIEDER, C., Employees' Intellectual Property Rights in Switzerland, 2015 , p.381

Thanks for the valuable opinions, again!

31
AFAIA computer software, or programs, is neither an invention nor a design, copyrights on software is regulated by the copyright law , in particular §17. While it reflects what you linked, the text isn't identical so §17 will probably prevail where a relevant difference exists.

Careful with the translations, they're non-binding for a reason. The previous English version of §17 for instance contained a grave translation error. It's been corrected meanwhile, after my pointing it out, the faulty translation said " ... in the course of discharging professional duties or fulfilling contractual obligations ..." instead of "... and ...".

Now, in the course of that correction I was sent an interesting remark by the federal translator, which he'd received from the lawyers that confirmed the error. The translated remark referring to §17 goes:

"The special provision only applies if the computer program was created in the course of official duties and in fulfilment of contractual obligations. This refers to computer programmes which are created in fulfilment of the work obligation agreed in the employment contract, i.e. which the employee had expressly or tacitly undertaken to create in the employment contract. It does not matter whether the creation of the programme takes place at the workplace or elsewhere and during the fixed working hours or outside. The only decisive factor is that it takes place in fulfilment of the contractual work obligation, i.e. that there is an internal connection between the creation of the programme and the employee's work. If this is not the case, the rights to the work are again governed by the general rules of Art. 16, unless special agreements exist. This applies even if employees have created a computer program at the workplace and/or during working hours, but not in fulfilment of their duties under their employment contract (e.g. an application program developed on their own initiative to facilitate their professional work).

Translated with www.DeepL.com/Translator (free version)"

32
I am definitely not an expert in software as a bio/chem/pharma attorney, but I think it can be patentable if it makes something do something which has a tangible real world effect (say operating a robot arm).

You'd need to speak to a specialist to get proper advice on that point.

33
Unless you have an unloved coworker called Jonesy who is quitting his job and has dropped hints about wanting to cash in on patents.

34
I'm not sure about that. Moving a robot arm is extremely simple and moving it in a slightly different way is very difficult to differentiate for the purposes of a patent.

AFAIK most software patents are on algorithms. So if you discover a completely new way to solve a problem, you can patent the method, but not the actual code.

35
No, no, no: Worst advice of this thread. Well maybe after the one advising the Op to comit a crime.

SW-related inventions are patentable throughout the world. I do that for a living

36
Great thread, lots of good info here. I think that non-competes need to be compensated in order to be enforceable. We have non-competes (not as long) but it is clearly understood in the company and by senior management that if you want to enforce you have to pay the salary for the period.

I also think that's pretty reasonable, because if the company cannot reasonably expect someone worth a non-compete (i.e. senior and experienced) to do a career change at that point in their life. So if a company wants the employee not to "compete" they would have to compensate. That's my understanding at least, worth less than 2 cents probably as I'm no lawyer

37
Where did I say they're not patentable???

What I do say is that they seem to be not covered by the § linked.

38
Well since only inventions and designs* are patentable, by saying SW are not inventions you effectively said SW is not patentable. And yes SW related inventions are very much covered by the respective articles of the code of obligations.

39
Fair enough. The situation abroad may well be different (especially in the US), that's just not the scope of this thread.

SW is covered and protected by copyright law in CH, same as a piece of art. The protection is inherent to creating the product, you don't need anything officially approved like a patent.

40
No, I was not referring to overseas but to any major patent office in the world granting patents for SW-related inventions (e.g. in Europe they are called CII).

SW code is covered by copyright, protected is probably a strong word since Copyright provides very little protection...

If you don't know what you are talking about, please at least do not spread misinformation. Thank you