Employed inventors

Under U.S. law, the inventor is defined as the owner of the patent unless the patent rights have been assigned to his or her employer, or some other individual or organization. Designations of assignment are typically filed with the U.S. Patent and Trademark Office (U.S. PTO) prior to the issuance of patents, and the name of the assignee is printed on the patent. In most countries outside of the United States, the patentee is the employer, rather than the employed inventor. 

When the first Moss Bill was filed, its provisions were studied by the American Chemical Society Committee on Economic Status and the Committee on Patent Matters and Related Legislation. One concern was whether an official ACS position on the bill should be presented to the governing congressional committee. The ACS bodies also felt that consideration should be given to the active involvement of ACS itself in developing a program for encouraging compensation to employed inventors. It soon became apparent to the members of the two ACS Committees that the issue was more complex than appeared, and a joint subcommittee was appointed to study the entire question in depth. This subcommittee, under my chairmanship, has been active since 1972, and it made a report to its parent committees in the fall of 1974 with recommendations for future action. 

There is no real opposition by corporate management to providing extra compensation to employed inventors. 

The principal problems to be resolved in providing such compensation are to determine what constitutes "fair treatment of employed inventors, to determine who should share in any compensation, and how to determine the value of an invention. These are complex problems that involve not only many technical and financial decisions but emotional and psychological considerations. 

Experience under the German law and similar laws in other countries indicates that such laws are workable, but the cost of administering them is substantial. Neither employed inventors nor employers are completely satisfied with them. 

Except for a few special instances, there is little evidence that providing an employed inventor an opportunity to exploit his inventions himself, if his employer chooses not to do so, has been a major benefit either to the inventor or society. In almost every case such inventions never get off the ground for economic reasons. 

Include in its "Guidelines for Employers strong statements that tangible awards should be provided for specific contributions by employed inventors further, inventive discoveries of no interest to employers should be released to employees. The ACS should encourage by direct communication and collaborative action the inclusion of similar provisions in employer guidelines published by other professional societies. 

Establish an office at ACS Headquarters to help individual employers set up equitable compensation plans for employed inventors. Such a service could be either self-sustaining through a fee system or provided at ACS expense. Joint efforts along these lines might be taken with other professional societies. 

Establish within ACS a counselling, mediation, and conciliation service for the benefit of members and employers in resolving issues relating to compensation for employed inventors. This service could be gratis or for a fee and could be a joint undertaking with other professional societies. 

Harter, F. C., Statutorily Decreed Awards tor Employed Inventors Will They Spur Advancement of the Useful Arts P.T.C. J. Res. Ed. (IDEA) (Winter 1971-72) 14 (4). 

Neumeyer, F., The Law of Employed Inventors in Europe, Study for Subcommittee on Patents, Trademarks, and Copyrights of the Committee on the Judiciary, U. S. Senate, Study No. 30 (1962). 

Quigley, S. T., Perspectives on Inventor Compensation, Symposium on Patent Awards for the Employed Inventor, 70th National Meeting, American Institute of Chemical Engineers, August 30, 1971. 

A Yes, the first point in my action plan was that two guidelines have been recommended by the Committee on Patent Matters and Related Legislation to the Committee on Professional Relations for inclusion in the ACS Guidelines for Employers. One has already been adopted by the latter committee, and the other is being considered for adoption at this meeting. The one that has been adopted reads this way "tangible awards should be provided for specific contributions by employed inventors. It should appear in the next edition of the Guidelines. The second one, that has not yet been adopted, is that inventions or discoveries of no use to the employers should be released to the employee. 

T he majority of inventions made in the United States today are made by employees of corporations. These employed inventors are required to sign written employment agreements in 98% of the cases (1). Why are such contracts so popular The common law (i.e., the law that applies if there is no written agreement) governing inventions by employees appears to be straightforward. Professor Stedman puts it this way ... 

This finding contradicts Neumeyer and O Meara (2, 3) who found that most large companies, 60% of them in O Meara s evaluation, gave monetary rewards to employed inventors. Having failed to receive adequate support in another survey of employers in order to clear up the discrepancy, I have proposed that the American Chemical Society (ACS) sponsor such a survey since they possess the resources to complete it successfully. Based on the small amount of response (20%) I received in my survey, however, and on 10 other employment agreements given to me by the ACS Council Committee on Professional Relations, I have found certain common features in these agreements. 

Sutton, J. P., Compensation for Employed Inventors, Chem. Technol. 

Neumeyer, F., The Employed Inventor in the United States, MIT Press,... 

A series of questions was submitted to approximately 20 thousand ACS members and almost half responded, one-third of whom were "employed inventors" (i.e. at least one patent to their credit). The results of the survey are summarized in Figures 8 and 9 ... 

Based on the membership survey, the ACS Task Force on Compensation for Employed Inventors is presently formulating recommendations for the ACS Board. 

There is no Justification for establishing a formal system in this country mandating extra compensation for employed inventors. There is no evidence that Invention or innovation would be encouraged, and the consequent administrative complexities, communication barriers and employee relations problems which would result, make the profit-sharing concept unappealing. 

Morle, C. W., "Compensation for Employed Inventors", a reprint of the Committee on Patent Matters and Related Legislation, American Chemical Society, Washington, D. C., p22, March 1976. 

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