Over the years, Kilby has won lots of recognition and several important awards for inventing the IC, including the 2000 Nobel Prize in Physics. But what about personal remuneration? Other than his salary, how much has Kilby actually earned from his role in creating this truly significant invention?
TI won't say. But questions about pre-assignment intellectual property (IP) agreements, the practice of engineers assigning their ideas and inventions to companies, are resurfacing from the IEEE-USA. In June, the Washington, D.C.-based lobbying office of the institute, which represents the IEEE's 230,000 U.S. members, published an updated, more detailed version of an earlier position paper covering the invention rights of engineers. The IEEE expects the paper to eventually develop into legislation to take to Congress.
Both position papers (the earlier version was published in November 2000) point out that such agreements are usually nonvoluntary, but that engineers must sign them as a precondition of employment.
The new version calls for timely and complete disclosure of required terms prior to, or simultaneous with, an offer of employment. "Our collective experiences and those of our correspondents," the IP committee says in its new position paper, "demonstrate that employers often have a dominant bargaining position." The new position paper also suggests that the employer consider reasonable objections and requests for modifications of terms. Such agreements should include reasonable efforts by the inventor to cooperate with the employer, even after the termination of employment. But the new position paper also says that "ethical standards require that the inventor be reasonably compensated."
CONSTITUTIONAL LAW
The U.S. Constitution grants specific rights to ownership of IP under Article I, Section 8, Clause 8. But for years, engineers have been signing pre-assignment IP agreements when they join companies, universities, and government agencies, passing their ideas and inventions on to their employers.
Lawnotes, a law facts Web site, indicates that no sweeping rules exist in the U.S. requiring employees to assign their inventions to their employers. Under the law, it's presumed that the inventor owns his or her invention, and that individuals own their patent rights, even though ideas are conceived and developed into an actual product during the engineer's course of employment. In practice, though, employees may be legally obligated to turn over their inventions to their employers.
According to Lawnotes, if employees are "hired to invent," they probably will be obligated to assign their inventions to their employees. In some cases, employers seek to strengthen their position against future lawsuits with a followup letter or memo to the employee (sent after the pre-assignment agreement is signed), reminding the employee that he was hired to invent. In cases where employees are "set to experiment," as Lawnotes calls it (that is, asked to solve a problem), they probably will be obligated to assign their invention rights to the company.
It starts to get complicated with outside contractors, such as consultants who work alone or with a company designer or researcher, when they come up with a new development or invention. That's why most companies require that even consultants sign agreements similar to their technical employees.
In addition, there are "shop rights." Here, a former employer may have provided funding or other support to develop a technology or product. Even if it does not own the patent rights to the technology, Lawnotes says, the company may still have shop rights in the form of a nonexclusive, royalty-free right to use the technology. Meanwhile, most industry companies continue to require their engineers to sign pre-assignment IP agreements, giving the company all, or most, of the rights to any of its engineers' technical developments.
"Some people believe that you can negotiate these things," says Robert J. Kuntz, who has done extensive research in the field of employee inventors for several years. "But how do you negotiate with a gorilla?"
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