Nevada's Employee Inventions Statute: Novel, Nonobvious, and Patently Wrong
Citation: Mary LaFrance (2002) Nevada's Employee Inventions Statute: Novel, Nonobvious, and Patently Wrong. Nevada Law Journal (RSS)
Internet Archive Scholar (search for fulltext): Nevada's Employee Inventions Statute: Novel, Nonobvious, and Patently Wrong
Download: http://scholars.law.unlv.edu/nlj/vol3/iss1/14/
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Summary
In 2001 a new Nevada law went into effect:
- Except as otherwise provided by express written agreement, an employer is the sole owner of any patentable invention or trade secret developed by his employee during the course of the employment that relates directly to work performed during the course of the employment.
Paper outlines how this is different from common law contract interpretation, which gives employer rights to employee inventions via express contract, impliedly when employee was hired to invent, or shop right to use (but not ownership of) employee inventions: the default shop right converted to an exclusive ownership right, without notice to employees. Also:
- analyzes Nevada statute by analogy to copyright work for hire doctrine and trade secret law, and finds Nevada statute unreasonably favorable to employer rights
- points out ambiguity in the Nevada statute relative to standard patent language ("develop" vs "conceive" and "reduce to practice") and in potentially broader "course of employment" vs more usual "scope of employment"
- points out that other states with statutes addressing invention assignment expand common law rights of employees; Nevada does the opposite
- points out that savvy employers do not need Nevada law (they can create express assignment contracts), but it creates a burden on uninformed employees and a potential windfall for uninformed employers
Theoretical and Practical Relevance
In 2003 https://www.leg.state.nv.us/Statutes/72nd/Stats200323.html#Stats200323page2832 added "and scope", addressing one of the ambiguities pointed out in the paper.
