Guidance

You Created It While You Were Employed. Do You Actually Own It?

You developed a framework that is becoming the foundation of your new business.

There's only one complication.

Some of it was developed while you were working somewhere else.

Maybe you began thinking about the concept after hours.

Maybe you tested parts of the process in your professional work.

Maybe you created materials on your personal computer but applied the methodology with your employer's clients.

Maybe your employer had a broad intellectual-property policy you barely noticed when you were hired.

Now you are preparing to trademark the name, publish the methodology, license it, build a certification, or create a company around it.

Before you do, there is a more important question:

Do you actually own it?

Creation Does Not Always Equal Ownership

Founders understandably assume:

“I came up with it, so it's mine.”

Sometimes that is correct.

Sometimes it isn't.

Intellectual-property ownership can be affected by employment agreements, assignment provisions, work-for-hire principles, company policies, job responsibilities, the nature of the work created, applicable law, and the circumstances surrounding development.

That's why ownership should be analyzed before significant money is invested in commercialization.

Start With the Paper Trail

Relevant documents may include:

• employment agreements
• confidentiality agreements
• invention or IP assignment agreements
• employee handbooks
• intellectual-property policies
• moonlighting or outside-business policies
• consulting agreements
• offer letters
• separation agreements

The exact language matters.

Some provisions are narrow.

Others attempt to reach broadly.

There may also be exceptions for independently developed material, outside activities, prior intellectual property, or work created without company resources.

Do not rely on memory.

Read the documents.

When Did You Create It?

Chronology can become extremely important.

When did the idea first emerge?

When did you name it?

When did you document the framework?

When were diagrams or written materials created?

When did you first teach it?

When did you first use it publicly?

Did any of those events occur before employment?

During employment?

After employment?

Contemporaneous evidence can be far more useful than trying to reconstruct the story years later.

Experts developing valuable intellectual property should maintain organized development records.

What Were You Hired to Do?

The relationship between the intellectual property and your actual job responsibilities may matter.

A methodology developed by someone whose job specifically required developing that type of material may present different questions from a framework developed independently in an unrelated area.

The analysis is highly fact-specific.

Whose Resources Were Used?

Consider whether development involved:

• company computers
• company software
• paid work time
• employer data
• employer research
• company personnel
• confidential information
• company clients
• internal company materials

Use of employer resources does not automatically answer every ownership question, but it can become relevant to the analysis.

Did You Apply the Method at Work?

This is where many situations become nuanced.

An expert may independently develop a body of knowledge and later apply portions of it professionally.

Application and creation are not necessarily the same thing.

But the relationship between independent development and later professional use should be carefully documented and analyzed, particularly when the employer has broad intellectual-property language.

Resolve Ownership Before Commercialization

If you plan to build substantial commercial value around a methodology, framework, curriculum, or other intellectual property, ownership uncertainty becomes business risk.

That risk becomes more serious when you:

• seek trademark registration
• publish materials
• raise capital
• license the IP
• build a certification
• enter partnerships
• sell the business
• authorize other people to use the methodology

A future licensee, investor, buyer, or business partner may eventually ask the same question:

How do you know you own this?

You want a good answer.

Your Intellectual Property Needs a Clean Foundation

Trademark registrations, copyright registrations, licensing agreements, and certification programs all sit on top of something more fundamental: ownership.

Before scaling intellectual property created near the boundaries of employment, collaboration, or another business relationship, establish the foundation.

The most valuable time to discover an ownership problem is before the asset becomes valuable enough for someone to fight over it.

Building a business around something you developed while employed?

Culture Kept Legal helps experts evaluate intellectual-property ownership and develop protection strategies before valuable assets are commercialized.

Official resource: U.S. Copyright Office: Works made for hire

Related Service

This topic is addressed directly through our IP Strategy & Ownership service. You can also review the trademark questions from creators and founders or return to the Guidance Library.