Employment Contracts Need to Ensure Physicians are Free Agents

Inventions and Discoveries

Physicians interested in developing proprietary technology (e.g., devices, techniques or software) should be aware of who will own their inventions and discoveries. Even though a physician might have invented a new technology, his or her employer may very well own the rights to that technology. Here is a checklist of key items to look out for:

• Do you have an employment agreement that requires you to assign inventions and copyrights to your employer?
• Does your employee handbook address ownership of inventions and copyrights?
• Are you subject to a research and development or technology transfer policy? Generally, if you or your employer is affiliated with a teaching hospital or academic institution, you are likely subject to these types of policies.
• Does your employer participate in government-funded research or have a technology transfer office?

Even if the answers to these four questions are “no,” you are not necessarily in the clear. Many additional factors can affect whether your employer has rights to your inventions and discoveries. For example, when you invented the technology, did you use your employer’s resources (e.g., laboratory time, personnel, supplies, computers, office space)? Was the invention made on your own time, outside of office hours? Are you also an officer or director of your employer?

The answers to these and other questions can affect who has rights to technology that a physician might invent or discover. If rights to and ownership of technology are a concern, this should be explicitly addressed with your employer, ideally prior to executing your employment agreement.