Prototype developed outside of work, employer wants me to finalize work in house. Do I automatically lose my IP?
<p>I developed a prototype outside of work using my own materials and time. The end product would be very useful in my field of work so I showed it to my boss, who now wants me to finish development in house using his materials and paying me for my time. Will I automatically lose the rights (barring a written contract) to my invention if I begin this work, despite already creating a working prototype?</p>
<p>Edit: this is Colorado USA.</p>

<h2>Its possible you already have</h2>
<p>You would need to check your contract but the default common law position (as detailed in <a href="https://www.business.qld.gov.au/running-business/protecting-business/ip-kit/browse-ip-topics/ownership-of-intellectual-property-created-by-your-employees-and-contractors-or-consultants/ownership" rel="nofollow noreferrer">this</a> <a href="/questions/tagged/queensland" class="post-tag" title="show questions tagged &#39;queensland&#39;" rel="tag">queensland</a> government article):</p>
<blockquote>
<p>As a general rule, an employer will own the intellectual property created by its employees in the course of their employment.</p>
<p>However, intellectual property that is created by an employee, other than in the course of employment, is owned by the employee, not the employer.</p>
</blockquote>
<p>So, to answer your question: it depends on what you created and what the roles and responsibilities of your job are to determine if it is created &quot;in the course of your employment&quot;.</p>
<blockquote>
<p>The most important single factor in deciding ownership of intellectual property created by employees is whether or not the employee had a duty to create intellectual property as part of their employment duties.</p>
</blockquote>
<p>Certainly, once you are directed to refine the prototype, any IP created after that belongs to your employer barring an agreement to the contrary.</p>

<p>This is going to depend on the specific facts of the matter, and the terms of your existing contract with your employer, if any. It will also depend on what country you are in.</p>
<p>If you have an existing contract with your employer that covers IP rights, that will have to be honored. Such a contract might make any work done &quot;within the scope  of your employment&quot; even if in off-hours, the property of the employer. Or it might have some other terms for when, if ever, the employer will own such IP rights. But it is not safe to assume that it is limited to things created during normal work hours or on the employers property.</p>
<p>If there is no contract covering such rights, the laws of your country probably impose a default agreement. The terms of such a default agreement vary from one country to another, and may be different for patents and copyrights even within a country.</p>
<p>If your immediate boss is willing to pay you extra to finish the project, s/he might be willing to sign a contract specifically confirming your rights to the work, perhaps in return for a license to the employer to use them. Such a contract would probably have to be authorized higher up in the company, depending on your boss's position. The exact terms would be subject to negotiation. Such a separate written contract would be your best protection, if the terms are acceptable. Otherwise you might need to go through a court case to have any rights clearly established, which could be expensive and time consuming. Such a contract could also modify any previous contract, which a court action would not do.</p>

intellectual-property