Work for Hire & Patents

The work made for hire doctrine is a copyright concept that does NOT cover patent inventions: WORK MADE FOR HIRE — COPYRIGHT LAW: statutory basis: 17 U.S.C. § 101 (Copyright Act); for COPYRIGHT works, 'work made for hire' means: (1) A work prepared by an EMPLOYEE within the scope of employment (all copyright automatically vests in the employer); (2) A work SPECIALLY ORDERED OR COMMISSIONED if: (a) it falls into one of 9 statutory categories; AND (b) the parties expressly agree in writing that it is a work made for hire; 9 STATUTORY CATEGORIES for specially ordered/commissioned works: (a) contribution to a collective work; (b) part of a motion picture or other audiovisual work; (c) a translation; (d) a supplementary work (foreword; afterword; editorial notes); (e) a compilation; (f) an instructional text; (g) a test; (h) answer material for a test; (i) an atlas; DOES IT APPLY TO PATENTS? NO — THE WORK MADE FOR HIRE DOCTRINE DOES NOT APPLY TO PATENT INVENTIONS: patents are not listed anywhere in § 101's work-made-for-hire categories; inventions are not 'works of authorship' under copyright law; patent ownership is governed by 35 U.S.C. § 261, which requires a WRITTEN ASSIGNMENT for transfers of patent rights; THE CRITICAL MISTAKE: many contracts include a 'works made for hire' clause and incorrectly assume this transfers patent rights; it does NOT; a contractor who develops a patentable invention owns the patent even if the contract includes a 'work made for hire' clause; THE SOLUTION: always include an EXPLICIT PATENT ASSIGNMENT CLAUSE in addition to any copyright work-made-for-hire provision: 'To the extent any invention or patentable subject matter results from this Agreement, Contractor hereby assigns to Company all right, title, and interest in and to any such inventions.'

The two IP regimes have fundamentally different ownership rules: COPYRIGHT — WORK MADE FOR HIRE: EMPLOYEES: any copyrightable work (software; written works; designs; graphics) created by an employee within the scope of employment automatically vests in the employer; NO written agreement required; the employer is the 'author' under copyright law; INDEPENDENT CONTRACTORS: copyright ownership remains with the contractor unless: the work falls into one of the 9 statutory categories; AND there is a written agreement designating it as work made for hire; or there is a written copyright assignment agreement; SOFTWARE: for software developed by employees: the employer automatically owns the copyright; for software developed by contractors: the work is NOT in the 9 WFH categories (software is not listed as a category); the contractor owns the copyright unless there is a written assignment; PATENT — ASSIGNMENT REQUIRED: employees: patents initially belong to the inventor(employee); no automatic vesting in the employer; REQUIRES: an invention assignment agreement (IAA) signed by the employee; the IAA must be in writing (§ 261); independent contractors: same as employees — patents belong to the inventor; requires a written assignment agreement; 'hired to invent': in some cases, an employee hired specifically to invent something may implicitly assign the patent to the employer (hired-to-invent doctrine); this is uncertain — always use a written IAA; PRACTICAL CHECKLIST FOR IP AGREEMENTS: for employees: IAA signed at hiring (covers patent assignment); employment agreement covers copyright scope-of-employment; for contractors: patent assignment clause (explicit); copyright assignment clause OR WFH designation; confidentiality obligation; pre-existing IP carve-out; assistance obligation (for patent prosecution).

A properly drafted contractor agreement must explicitly address patent ownership: REQUIRED ELEMENTS FOR PATENT TRANSFER: (1) PRESENT ASSIGNMENT (strongest): 'Contractor hereby assigns to Company all right, title, and interest in and to any inventions, discoveries, improvements, and patentable subject matter conceived or made in connection with this Agreement or using Company resources or information.'; 'hereby assigns' = present tense assignment that is effective immediately upon conception; (2) FUTURE ASSIGNMENT (backup): 'Contractor agrees to assign, and does hereby assign, to Company all inventions...'; covers inventions not yet conceived; may require a separate assignment document to be recorded at the USPTO; (3) SCOPE: the assignment should cover: inventions conceived DURING the engagement; inventions using Company trade secrets or confidential information; improvements to Company technology; inventions resulting from the scope of work; (4) ASSISTANCE OBLIGATION: 'Contractor agrees to execute all documents and take all actions reasonably requested by Company to perfect, evidence, and enforce Company's rights in the assigned inventions, including patent applications'; this extends beyond the contract term; critically important for patent prosecution (which may occur years after the engagement ends); (5) SPECIFICATION SUPPORT: 'Contractor agrees to provide technical information and assistance to Company's patent counsel in connection with preparing and prosecuting patent applications for assigned inventions'; (6) CONFIDENTIALITY: all inventions made for Company are trade secrets until public; the contractor must keep them confidential; (7) PRE-EXISTING IP CARVE-OUT: 'Contractor retains ownership of all inventions made prior to this Agreement, as listed in Exhibit A'; list pre-existing inventions to avoid future disputes; FILING WITH USPTO: the written assignment must be filed with the USPTO Assignment Division (recordable) to be effective against a subsequent bona fide purchaser for value without notice (§ 261); file promptly.

The 9 statutory WFH categories are narrower than most people assume: CATEGORY 1 — CONTRIBUTION TO A COLLECTIVE WORK: an article, chapter, or other contribution to a compilation (encyclopedia; anthology; encyclopedia); the contribution is WFH if commissioned as part of a collective work with a written agreement; CATEGORY 2 — PART OF A MOTION PICTURE OR AUDIOVISUAL WORK: video content commissioned for another company; training videos; commercials; CATEGORY 3 — TRANSLATION: a work translated from another language; CATEGORY 4 — SUPPLEMENTARY WORK: forewords; afterwords; prefaces; editorial notes; indexes; CATEGORY 5 — COMPILATION: a work formed by collecting and assembling pre-existing materials (database; anthology); CATEGORY 6 — INSTRUCTIONAL TEXT: a literary, pictorial, or graphic work prepared for use in day-to-day instructional activities; CATEGORY 7 — TEST: standardized test materials; CATEGORY 8 — ANSWER MATERIAL FOR A TEST: answer keys and materials; CATEGORY 9 — ATLAS: geographic works; NOTABLE ABSENCES FROM THE 9 CATEGORIES: SOFTWARE: not a WFH category for contractors (despite being the most common work product in tech companies); contractors own software copyright unless assigned; ARCHITECTURAL DRAWINGS: not in the 9 categories (despite being protectable as architectural works); GENERAL CREATIVE WORKS: a website design; graphic design; marketing materials — NOT in the 9 categories if done by a contractor; PRACTICAL IMPLICATION: for companies hiring contractors for software development, website design, graphic design, or most creative services: the contractor owns the copyright; the company needs a WRITTEN COPYRIGHT ASSIGNMENT (not just a WFH clause); include both: 'To the extent this work constitutes a work made for hire, it is work made for hire. To the extent it does not constitute a work made for hire, Contractor hereby assigns all copyright in the work to Company.'; this belt-and-suspenders approach covers both bases.

A systematic approach to contractor IP ensures companies own the IP they paid for: BEFORE THE ENGAGEMENT BEGINS: STEP 1 — WRITTEN AGREEMENT: never start work without a written agreement; use a standard form that includes: explicit patent assignment; belt-and-suspenders copyright (WFH + assignment backup); confidentiality; assistance obligation; pre-existing IP carve-out; STEP 2 — LIST CONTRACTOR'S PRE-EXISTING IP: have the contractor list any pre-existing patents, patent applications, or copyrightable works they will use or incorporate; define clearly what the contractor retains ownership of; STEP 3 — SCOPE DEFINITION: clearly define what work is covered by the agreement; this limits disputes about whether a specific invention was developed 'in connection with' the engagement; DURING THE ENGAGEMENT: STEP 4 — TRACK INVENTION DISCLOSURES: require contractors to promptly disclose any inventions they conceive during the engagement; STEP 5 — DOCUMENT USE OF COMPANY RESOURCES: document that the contractor used company systems, information, or tools (strengthens the assignment argument if the contractor later disputes ownership); AFTER THE ENGAGEMENT: STEP 6 — CONFIRM IP TRANSFER: at engagement end, have the contractor confirm they have transferred all IP developed during the engagement; if any specific inventions were developed, record the assignment at the USPTO; STEP 7 — RECORD ASSIGNMENT AT USPTO: 35 U.S.C. § 261: a patent assignment is void against subsequent purchasers for value without notice UNLESS it is recorded within 3 months of execution; record all patent assignments promptly; STEP 8 — REVIEW BEFORE PATENT FILING: before filing any patent application covering work developed with contractor assistance, confirm the assignment is in place and recorded; COMMON MISTAKES: starting work before the agreement is signed; not including an explicit patent assignment (only WFH clause); not including a post-engagement assistance obligation; not recording the assignment at the USPTO; not listing contractor's pre-existing IP.