In Orly Lobel's book Talent Wants to Be Free, she tells the story of Evan Brown. Mr. Brown, while employed by Alcatel in Texas, arrived at a solution to a computing problem that he had been thinking about long before he was hired by Alcatel, and which was not related to his work for his employer. He disclosed this fact to his employer, and though he had never written anything down, Alcatel claimed ownership of the idea and eventually compelled him to record it (without pay, we note, after extended litigation) and assign it to them. The first object of curiosity is why Mr. Brown didn't have the sense to conveniently forget that he'd ever thought of the solution, at least until he had moved to a jurisdiction with more respect for individual rights. But the underlying question to be asked is: why is an employee compelled to assign rights to inventions to their employer?

The authority for "intellectual property" law in the United States, section VIII of the US constitution, gives Congress the privilege of establishing exclusive rights for "authors and inventors". It makes no mention of corporations or other employers. And yet, as we have noted, 90% of all patents issued today are owned by corporations. Corporations normally require their technical employees to sign agreements compelling the employee to assign all exclusive rights to the corporation.

The theory underlying compulsory assignment is the idea that technical employees are "hired to invent". This is an interesting contradiction in terms. If an employee is hired and paid to solve a certain problem, we can reasonably assume that the employer expects the problem to be solved with high probability of success, and therefore the solution to the problem is an expected result of the activity for which the employee is paid. If the solution is the expected result of asking a person of appropriate skill to work on a problem, how can it be non-obvious (that is, surprising and not expected) to such a person? If the solution is an expected result of the activity, and therefore obvious or at least hardly surprising, how can it be inventive enough to deserve a patent? If it is surprising that an employee solves the problem they are assigned to solve, we should expect employees to be paid to fail in the normal (expected) case. I have not observed such an inclination in my three decades of commercial employment. We are led to conclude that "inventions" that are made in the course of work that an employee is expected to complete cannot be patentable. Only inventions that are not related to their assigned work could be regarded as surprising and non-obvious.

So we can assert that most of the 90% of filings in the United States that are created by corporate employees and assigned perforce to their employers are inherently unpatentable. If corporations don't like this answer, they have to admit that they don't hire people to invent novel and surprising things. One solution to the conundrum, of course, is to abandon the bizarre categorization of ideas into "obvious" and "non-obvious", by using claimless patents, as advocated in our earlier posts. If this is not an acceptable path, corporations and courts ought to abandon the doctrine that an employee is "hired to invent", and realize that any actual non-obvious inventions must be surprising, unexpected, and not the predictable result of being paid. Therefore those inventions don't belong to the employer, but to the inventor, as prescribed by the Constitution.

In the next post, we'll examine some sensible revisions of the doctrine of compulsory assignment.

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