June 16, 2025 • 22 mins
Genius doesn't come with a price tag until someone tries to take it from you. When brilliant minds create groundbreaking innovations during employment, who truly owns these inventions? This fascinating legal arena pits creators against corporations in battles that can span decades and result in multi-million-dollar verdicts.
Meet John Peterson, the engineer who refused to surrender his weekend projects to a convenience store chain that claimed everything he created, even off the clock. His story of fighting Bukies' overreaching employment contract offers a masterclass in standing up for your intellectual property rights. Then there's Professor Shanks, whose glucose biosensor technology earned his employer £24 million. In comparison, he received nothing until a twenty-year legal battle culminated in a £2 million award and a landmark UK Supreme Court decision on "outstanding benefit."
From patent grammar wars where a single verb tense determined ownership of HIV diagnostic technology to post-employment clauses that tried to claim an inventor's future ideas, we explore the fine print that can make or break inventor fortunes. We'll take you around the globe from Germany's sophisticated formulas for inventor compensation to China's statutory minimum payouts, revealing how different legal systems value creative minds. Whether you're sketching brilliance on napkins or developing prototypes in corporate labs, understanding your rights as an inventor has never been more crucial. As workplace innovation drives the modern economy, the law is finally catching up to ensure the minds behind the magic receive their fair share.
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Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:00):
Some inventions are sparked over coffee, others in
corporate cubicles, but whenthey turn into million dollar
ideas, someone's going to wantmore than just a thank you.
Today, we're celebrating theminds behind the magic, from
solo engineers with spicy sideprojects to professors cashing
in years later.
We're dishing out real legaldrama with a side of justice,
because when you inventbrilliance, you deserve more
(00:20):
than just your name on thefiling.
You deserve your slice of thepie.
Speaker 2 (00:28):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Speaker 3 (00:39):
Welcome to Intangiblia.
I'm your host, leticia Caminero.
This is the podcast where ideasmeet contracts and where we ask
important questions like if youinvented the wheel at work, can
you at least keep the patentfor the axle?
Today we're diving into a worldof real-life inventor drama A
beaver-branded gas station chaintrying to claim off-duty
(01:00):
inventions, a glucose sensorthat took 20 years to pay out,
and a case where a single verbtense handed patent rights to
the wrong party.
We'll explore grammar battles,post-employment power plays and
countries where just filing apatent might earn you a payday.
We'll meet a professor whofought for credit, a techie
(01:22):
whose side project becamecorporate gold, and an engineer
who took on Samsung and won,because, when it comes to
workplace innovation, knowingthe law might be the most
valuable asset.
Speaker 1 (01:34):
Artemisia coded, clever and definitely not
signing away my IP rightswithout a fight.
Disclaimer.
This episode was created usingAI tools, including Artemisia.
Disclaimer.
Speaker 3 (01:51):
This episode was created using AI tools,
including Artemisia, fullyenergized, enthusiastically
coded and always receiving thecredit that brilliant assistants
deserve.
We start with a spicy one.
John Peterson, an engineer andformer Bukies employee, is doing
the wildly successful text andconvenience start chain for a
jaw-dropping $20 million.
Zero cents.
And no, it's not about stolensnacks, it's about stolen smarts
(02:12):
.
Pettersson claims he wascoerced into signing an IP
assignment agreement thateffectively gave Buki's
ownership over all of hisinventions, including those
created entirely off the clockin his own home using his own
tools.
Speaker 1 (02:30):
One of the inventions , a set of HR automation tools
and food production equipmentThings that had nothing to do
with selling brisket sandwichesand giant sodas.
When Bucky's allegedly foundout about his side projects,
they demanded he destroy them.
When Bucky's allegedly foundout about his side projects,
they demanded he destroy them.
He refused, they fired him andnow he's suing.
Speaker 3 (02:49):
The legal issue at the heart of this case Whether
an employer can claim rights toinventions made outside of work,
outside the job description andwith no company resources.
In many jurisdictions theanswer is no, but it depends
heavily on the language in theemployment contract, and that's
(03:09):
where things get slippery.
Speaker 1 (03:12):
This case also underscores the danger of broad,
overreaching IP clauses.
A lot of employment contractshave language like you assign to
us any invention you make whileemployed.
But what happens when thatincludes your weekend passion?
Speaker 3 (03:28):
project.
The storytelling in this onewrites itself a David versus
Vive Goliath a clever inventortrying to protect his creations
from a corporate giant with deeppockets and aggressive lawyers
and aggressive lawyers.
Whatever the outcome, this casecould set new limits on how far
(03:48):
employment contracts can gowhen it comes to invention
ownership.
Inshanks wasn't just tinkeringwith science.
He was building somethinggroundbreaking.
Back in the 80s, while workingat a Unilever subsidiary, he
developed a new biosensortechnology.
It turned out to be a gamechanger in glucose testing,
(04:09):
especially for diabetics.
The company eventually licensedit out, breaking in over 24
million pounds sterling, zeropence and Shanks.
He got a small pat on the backand a fight that will last
nearly two decades.
Speaker 1 (04:25):
Let's set the scene.
Shanks had signed a standardemployee agreement.
The company owned the invention, which isn't unusual.
But the UK Patents Act saysthat if an invention provides an
outstanding benefit to theemployer, the inventor deserves
a fair share.
So Shanks took Unilever tocourt.
Speaker 3 (04:46):
Unilever argued that 24 million pounds sterling zero
pence was pocket change for acompany their size.
The court wasn't buying it In2019, the Supreme Court said.
Essentially it's not about thecompany's size, it's about the
invention's value and context.
They awarded Chang's £2 millionsterling zero pence a rare but
(05:10):
important win for employeeinventors.
Speaker 1 (05:13):
This decision didn't just close a chapter.
It opened a door.
Now inventors across the UKhave a stronger legal basis to
demand compensation when theircreations make serious money,
even if they're just onebrilliant cog in a corporate
machine.
Speaker 3 (05:30):
It's the classic underdog story a single inventor
facing down a global giant andproving that fairness can be
measured in both percentages andpersistence.
Now let's talk about whathappens when an invention
predates your job but ends uppowering your employer's success
(05:50):
.
In Aprio and VisaCari, thestory gets murky.
Zacari had created a softwaretool before joining Aprio, but
once it was on board, he usedthat tool as part of a larger
company project.
Speaker 1 (06:04):
As Aprio then filed a copyright registration, naming
itself as the sole author,zakari objected, saying the core
was his creation.
He hadn't assigned it.
And yet the company argued itwas part of his job.
Speaker 3 (06:17):
This case pushes on the boundaries of IP ownership
when pre-existing inventionsmeet new employment.
Did he forfeit his rights byintegrating it into company work
, or does prior authorshipalways carry weight?
The court decided Zakari wasthe rightful owner.
Speaker 1 (06:36):
Legally.
It reminds us that just becauseyou use your own tools on the
job doesn't mean you've giventhem away.
Courts now increasingly look atintent, timing and explicit
assignments.
Speaker 3 (06:47):
It's a cautionary tale for inventors If you bring
your own IP into a job, becrystal clear about boundaries.
And for employers don't assumethat everything an employee
touches is yours by default.
Texas juries don't play In oneof the most talked about tech
verdicts of 2025,.
Headwater Research, founded bynone other than John Pedersen,
(07:11):
won a stunning $278,800,000 indamages against Samsung.
The allegation that Samsung hadincorporated patented
touchscreen and haptic feedbacktechnology into its smartphones
and tablets.
The kicker Pedersen hadconceived these inventions after
(07:31):
leaving his job.
Speaker 1 (07:33):
But Samsung pointed to a post-employment assignment
clause Pedersen signed while athis former company.
They argued that anything heinvented within a certain time
window after leaving stillbelonged to them.
Sounds like a legal leash right, but Pettersson proved that the
inventions were conceivedindependently and crucially,
after his employment ended.
After his employment ended.
Speaker 3 (07:55):
This case lands squarely on one of the most
contentious IP clauses out thereAssignment catch holes that try
to rope in ideas employeeshaven't even had.
Yet the jury saw through it.
They ruled for Pettersson,essentially saying your brain
doesn't belong to your boss Onceyou've left the building.
Speaker 1 (08:15):
It's a landmark, not just because of the money, but
because of the message.
Post-employment IP clauses havelimits.
You can't claim a futureinvention like it's leftover
office stationery.
Speaker 3 (08:27):
And, let's be honest, it's also just a great story.
The same inventor who took onbookies now topples Samsung From
brisket to billion dollardevices.
Pedersen's legal trail is onefor the IP history books.
Let's head into the thrillingworld of grammar, because, yes,
even phrasing can cost millionsIn this case.
(08:50):
A professor at the Universityof Michigan invented health
monitoring technology whileemployed there.
Apple later licensed thetechnology from the university,
but there was one major problemthe university didn't actually
own the patent rights.
Speaker 1 (09:07):
Why?
Because the university's IPpolicy said that researchers
agreed to assign inventions tothe institution.
That future tense phrasingmeant the rights weren't
automatically transferred.
The court ruled that this wasnot a present tense assignment.
The inventor, not theuniversity, held the rights and
(09:27):
Apple had licensed from thewrong party.
Speaker 3 (09:31):
So the inventor sued, claiming rightful ownership,
and the court sided with them.
What looked like a boring lineof policy language became the
deciding factor in a high stakespatent dispute.
Speaker 1 (09:47):
This is part of a growing body of case law that
highlights just how crucialcontract wording is.
Do hereby assign equals?
Transfer Will assign Not yet,and that gap can mean the
difference between institutionalownership and individual
control.
Speaker 3 (10:05):
A legal takeaway.
Universities and companies needto stop copy pasting IP clauses
and start calling their lawyersand inventors.
If your contract isn't specific, you just might have the last
word.
Let's rewind to a pivotal casethat became the grammar lesson
every IP lawyer now memorizes InStanford v Roche, disputes
(10:29):
centered around who owned therights to a breakthrough HIV
diagnostic tests.
A Stanford researcher, markHolodny, had signed agreements
with both the university and aprivate company, cetus, which
was later acquired by Rush.
Speaker 1 (10:46):
Here's the twist.
Stanford's agreement saidHolodny will assign future
inventions, but the Cetusagreement used the present tense
do hereby assign.
The courts ruled that thepresent tense do hereby assign.
The courts ruled that thepresent tense agreement took
priority.
That single verb choice handedownership of a major patent to
(11:07):
Roche and left Stanford withnothing.
Speaker 3 (11:10):
This wasn't just a university blunder.
It became a landmark SupremeCourt case in 2011 and continues
to be cited across employmentIP disputes, especially in
biotech.
Speaker 1 (11:23):
The takeaway Universities, startups, anyone
hiring innovators don't getcasual with your contract
language, and for inventors it'sa cautionary tale Know who
you're signing with and when.
If your agreements conflict,the one with the clearest and
present tense language coulddictate everything.
Speaker 3 (11:43):
Stanford B Roche isn't just about one test.
Stanford v Roche isn't justabout one test.
Speaker 2 (11:56):
It's about clarity, timing and why verbs can make or
break multimillion-dollarpatents.
Speaker 3 (12:01):
Intangiblia, the podcast of intangible law.
Playing talk about intellectualproperty, let's talk about one
of the boldest pivots in recentpatent law.
Traditionally, once an inventorassigns a patent to an employer
, that's it no backseats.
But the 2021 US Supreme Courtdecision in Minerva Surgical
Biologic shook that norm.
The case involved a medicaldevice patent and a challenge
(12:25):
brought by its original inventor.
The legal doctoring on thetable, a signer stoppel.
Speaker 1 (12:32):
Signer stoppel is basically the idea that if you
sell or sign your patent, youcan't later say it's invalid.
Like selling someone a car andthen telling the motor vehicle
authority it was neverroadworthy.
But here's the twist the courtsaid that if what you're
challenging came after theassignment, like new claims
added later, then game on, andin this case that mattered.
Speaker 3 (12:56):
The inventor said the company had expanded a patent
scope to cover something hedidn't actually invent.
The Supreme Court agreed.
You can't stop someone fromchallenging something they
didn't technically assign in thefirst place.
Speaker 1 (13:10):
This decision is huge for employee inventors.
It gives them back someleverage.
Just because you sign somethingover doesn't mean you surrender
forever, especially if your oldIP gets twisted into something
new.
Speaker 3 (13:22):
In other words your past self doesn't get to silence
your future self, and in thehigh stakes world of patent
litigation, that's a powerfulshift.
Sometimes you don't need a fullvictory, just a good start.
That's the message PolandSupreme Court sent in a 2020
case that turned heads acrossEurope.
(13:45):
The court ruled that, when itcomes to employee inventions,
remuneration isn't just aboutwhether a patent gets granted.
It's about effort and intent.
Speaker 1 (13:56):
The case involved an inventor who developed and
disclosed a patentable inventionduring his employment.
The employer filed a patentapplication, but the patent
hadn't yet been granted.
When the employee requestedcompensation, the company said
let's wait and see.
But the court said nope, filingtriggers rights.
Speaker 3 (14:16):
This is significant because in many jurisdictions
compensation is only owed if apatent is granted and
commercialized.
But Poland said the very act offiling shows the invention has
value.
So the inventor deservesrecognition and payment from
that point forward.
Speaker 1 (14:35):
It's a progressive take that puts the focus back on
the contribution itself, notjust the company's bottom line,
and for researchers workinginside large institutions, where
many filings never gocommercial, it's a welcome
precedent.
Speaker 3 (14:49):
In the storytelling arc of inventor justice.
This is that feel-good moment.
It says thanks for your brainwork, we see you.
Here's a case that played outin China, but with echoes in
workplaces everywhere.
Zhang, a diligent engineer at3M China, developed a successful
new product that ended upgenerating major revenue.
(15:10):
He expected a reward,specifically bonus compensation
under the company's incentivepolicy.
But when he came knocking, 3msaid sorry, our internal policy
doesn't require us to pay you.
Speaker 1 (15:25):
So Zhang sued, and the Shanghai High People's Court
didn't just agree with him.
They made a statement.
The court ruled that statutoryinventor rights under China's
patent law override internalcompany rules.
It didn't matter that 3M'sinternal HR policy tried to cap
(15:45):
or redirect compensation.
The law says inventors must berewarded for service inventions.
Jang's story also reflects adeeper legal principle that's
gaining traction globally If thelaw grants you a right, your
employer can't just memo it away.
Speaker 3 (16:01):
It's a classic case of David versus the memo machine
, and a win that will resonatewith employees in every lab,
factory and R&D office acrossthe country.
In South Korea, not everyinvention made on the job is
guaranteed a payout.
This case involved a medicalengineer who developed an
(16:22):
innovation while employed by amid-sized health tech company.
He filed for compensation underKorea's Invention Promotion Act
, expecting to be rewarded forhis contribution, but the court
said not so fast.
Speaker 1 (16:39):
The judge ruled that because the invention didn't
generate exclusive commercialbenefit for the company, meaning
it wasn't a dominant factor inthe company's revenue, the
engineer wasn't entitled toadditional remuneration.
Even though the invention wastechnically valuable, it didn't
meet the financial impactthreshold.
Speaker 3 (17:01):
That's a high bar.
In collaborative industrieslike medical devices, it's rare
for one innovation to carry theload alone.
This standard puts inventors ina tough spot.
If their contribution is foldedinto a larger ecosystem, how do
they prove their value?
Speaker 1 (17:18):
It's the dark side of value-based recognition.
Companies love it until you tryto quantify what your
creativity is really worth toquantify what your creativity is
really worth.
Speaker 3 (17:31):
This case shows that legal recognition of inventors
still varies wildly by country,and sometimes even a brilliant
idea can get lost in thecomplexity of product
integration and profitattributions.
Okay, let's zoom in on the partthat usually comes with fine
print and finance departmentsremuneration formulas.
Around the world, differentcountries have very different
(17:52):
approaches to how inventorsshould be compensated for their
work, and while they don't alluse the same math, most agree on
one thing Inventors should geta piece of the pie.
Speaker 1 (18:05):
Let's start with Germany.
Their Employee Inventions Actis basically a calculator
disguised as law.
It uses a three-part formula.
You multiply the exploitationvalue by both the inventor's
share and the personal share.
The result a precise,structured payout that considers
profit, team size and how muchinitiative the inventor brought
(18:26):
to the table.
Speaker 3 (18:27):
Meanwhile, China keeps it clear and minimum-based
.
The law mandates that inventorsreceive at least 2% of profits,
or 0.2% of the company'soperating income derived from
the patented invention.
It's simple math, but inhigh-volume sectors it adds up
(18:48):
fast.
Speaker 1 (18:49):
Japan takes a more flexible route.
The law requires reasonableremuneration, often calculated
through negotiation or policy.
It gives companies room, butalso demands fairness.
And, yes, japanese courts havestepped in when employers got
too stingy.
Speaker 3 (19:09):
Inventors only get compensated if their invention
brings an outstanding benefit tothe employer, like Shanks did
with Unilever.
It's a high bar, but when youclear it the payout can be
massive.
Speaker 1 (19:21):
And there's Poland where innovation effort is
enough.
You don't need to wait for agranted patent or commercial
success.
Just filing the patent cantrigger your right to
remuneration.
It's refreshing and empowering,especially for inventors in
academia and the public sector.
Speaker 3 (19:38):
Different formula, same goal To make sure the minds
behind the magic aren't leftempty handed.
Whether it's statutorypercentages or judicial
discretion, the wall is wakingup to the value of rewarding
innovation fairly.
Speaker 1 (19:54):
So here's to every inventor out there sketching
brilliance on napkins orprototyping in broom closets,
wherever you live, there's aformula and a fight to make sure
your genius gets its due.
Speaker 3 (20:08):
From beaver branded lawsuits to grammar induced
ownership flips, this episodeproved one thing when it comes
to workplace inventions, thefine print isn't just legal
fluff, it's your future.
Speaker 1 (20:20):
First invention.
Timelines matter, whether youridea was born before, during or
even after your job.
What you sign and when candefine your rights, protect your
past work, clarify your presentduties and don't give away your
future too easily.
Speaker 3 (20:36):
Second, clarity in contracts is key.
A single word or tense canchange who owns what.
Employment agreements aren'tjust paperwork.
They are roadmap for yourrights.
Speaker 1 (20:50):
Third inventor pay systems vary around the world,
but the message is shared.
If your work creates value, youshould see some of it.
Whether that's through formulas, statutory rights or court
intervention, recognition isrising.
Speaker 3 (21:04):
And finally, national laws can offer protection even
when company policies fall short.
Legal frameworks are evolvingto honor creativity and
contribution, even when theemployer's memo says otherwise.
Speaker 1 (21:17):
So, whether you're building something brilliant in
a lab, an office or a garage,know your rights, read the fine
print and celebrate yourcreativity.
Speaker 3 (21:26):
Thanks for tuning in to Intangiblia.
New episodes every Tuesday inEnglish and Spanish.
Visit intangibliacom and don'tforget to patent your brilliance
.
Speaker 1 (21:38):
Before someone else does.
Speaker 2 (21:40):
Thank you for listening to Intangiblia, the
podcast of intangible law plaintalk about intellectual property
.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(22:00):
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
Some inventions are sparked over coffee, others in
corporate cubicles, but whenthey turn into million dollar
ideas, someone's going to wantmore than just a thank you.
Today, we're celebrating theminds behind the magic, from
solo engineers with spicy sideprojects to professors cashing
in years later.
We're dishing out real legaldrama with a side of justice,
because when you inventbrilliance, you deserve more
(00:20):
than just your name on thefiling.
You deserve your slice of thepie.
Speaker 2 (00:28):
You are listening to Intangiblia, the podcast of
intangible law playing talkabout intellectual property.
Please welcome your host,leticia Caminero.
Speaker 3 (00:39):
Welcome to Intangiblia.
I'm your host, leticia Caminero.
This is the podcast where ideasmeet contracts and where we ask
important questions like if youinvented the wheel at work, can
you at least keep the patentfor the axle?
Today we're diving into a worldof real-life inventor drama A
beaver-branded gas station chaintrying to claim off-duty
(01:00):
inventions, a glucose sensorthat took 20 years to pay out,
and a case where a single verbtense handed patent rights to
the wrong party.
We'll explore grammar battles,post-employment power plays and
countries where just filing apatent might earn you a payday.
We'll meet a professor whofought for credit, a techie
(01:22):
whose side project becamecorporate gold, and an engineer
who took on Samsung and won,because, when it comes to
workplace innovation, knowingthe law might be the most
valuable asset.
Speaker 1 (01:34):
Artemisia coded, clever and definitely not
signing away my IP rightswithout a fight.
Disclaimer.
This episode was created usingAI tools, including Artemisia.
Disclaimer.
Speaker 3 (01:51):
This episode was created using AI tools,
including Artemisia, fullyenergized, enthusiastically
coded and always receiving thecredit that brilliant assistants
deserve.
We start with a spicy one.
John Peterson, an engineer andformer Bukies employee, is doing
the wildly successful text andconvenience start chain for a
jaw-dropping $20 million.
Zero cents.
And no, it's not about stolensnacks, it's about stolen smarts
(02:12):
.
Pettersson claims he wascoerced into signing an IP
assignment agreement thateffectively gave Buki's
ownership over all of hisinventions, including those
created entirely off the clockin his own home using his own
tools.
Speaker 1 (02:30):
One of the inventions , a set of HR automation tools
and food production equipmentThings that had nothing to do
with selling brisket sandwichesand giant sodas.
When Bucky's allegedly foundout about his side projects,
they demanded he destroy them.
When Bucky's allegedly foundout about his side projects,
they demanded he destroy them.
He refused, they fired him andnow he's suing.
Speaker 3 (02:49):
The legal issue at the heart of this case Whether
an employer can claim rights toinventions made outside of work,
outside the job description andwith no company resources.
In many jurisdictions theanswer is no, but it depends
heavily on the language in theemployment contract, and that's
(03:09):
where things get slippery.
Speaker 1 (03:12):
This case also underscores the danger of broad,
overreaching IP clauses.
A lot of employment contractshave language like you assign to
us any invention you make whileemployed.
But what happens when thatincludes your weekend passion?
Speaker 3 (03:28):
project.
The storytelling in this onewrites itself a David versus
Vive Goliath a clever inventortrying to protect his creations
from a corporate giant with deeppockets and aggressive lawyers
and aggressive lawyers.
Whatever the outcome, this casecould set new limits on how far
(03:48):
employment contracts can gowhen it comes to invention
ownership.
Inshanks wasn't just tinkeringwith science.
He was building somethinggroundbreaking.
Back in the 80s, while workingat a Unilever subsidiary, he
developed a new biosensortechnology.
It turned out to be a gamechanger in glucose testing,
(04:09):
especially for diabetics.
The company eventually licensedit out, breaking in over 24
million pounds sterling, zeropence and Shanks.
He got a small pat on the backand a fight that will last
nearly two decades.
Speaker 1 (04:25):
Let's set the scene.
Shanks had signed a standardemployee agreement.
The company owned the invention, which isn't unusual.
But the UK Patents Act saysthat if an invention provides an
outstanding benefit to theemployer, the inventor deserves
a fair share.
So Shanks took Unilever tocourt.
Speaker 3 (04:46):
Unilever argued that 24 million pounds sterling zero
pence was pocket change for acompany their size.
The court wasn't buying it In2019, the Supreme Court said.
Essentially it's not about thecompany's size, it's about the
invention's value and context.
They awarded Chang's £2 millionsterling zero pence a rare but
(05:10):
important win for employeeinventors.
Speaker 1 (05:13):
This decision didn't just close a chapter.
It opened a door.
Now inventors across the UKhave a stronger legal basis to
demand compensation when theircreations make serious money,
even if they're just onebrilliant cog in a corporate
machine.
Speaker 3 (05:30):
It's the classic underdog story a single inventor
facing down a global giant andproving that fairness can be
measured in both percentages andpersistence.
Now let's talk about whathappens when an invention
predates your job but ends uppowering your employer's success
(05:50):
.
In Aprio and VisaCari, thestory gets murky.
Zacari had created a softwaretool before joining Aprio, but
once it was on board, he usedthat tool as part of a larger
company project.
Speaker 1 (06:04):
As Aprio then filed a copyright registration, naming
itself as the sole author,zakari objected, saying the core
was his creation.
He hadn't assigned it.
And yet the company argued itwas part of his job.
Speaker 3 (06:17):
This case pushes on the boundaries of IP ownership
when pre-existing inventionsmeet new employment.
Did he forfeit his rights byintegrating it into company work
, or does prior authorshipalways carry weight?
The court decided Zakari wasthe rightful owner.
Speaker 1 (06:36):
Legally.
It reminds us that just becauseyou use your own tools on the
job doesn't mean you've giventhem away.
Courts now increasingly look atintent, timing and explicit
assignments.
Speaker 3 (06:47):
It's a cautionary tale for inventors If you bring
your own IP into a job, becrystal clear about boundaries.
And for employers don't assumethat everything an employee
touches is yours by default.
Texas juries don't play In oneof the most talked about tech
verdicts of 2025,.
Headwater Research, founded bynone other than John Pedersen,
(07:11):
won a stunning $278,800,000 indamages against Samsung.
The allegation that Samsung hadincorporated patented
touchscreen and haptic feedbacktechnology into its smartphones
and tablets.
The kicker Pedersen hadconceived these inventions after
(07:31):
leaving his job.
Speaker 1 (07:33):
But Samsung pointed to a post-employment assignment
clause Pedersen signed while athis former company.
They argued that anything heinvented within a certain time
window after leaving stillbelonged to them.
Sounds like a legal leash right, but Pettersson proved that the
inventions were conceivedindependently and crucially,
after his employment ended.
After his employment ended.
Speaker 3 (07:55):
This case lands squarely on one of the most
contentious IP clauses out thereAssignment catch holes that try
to rope in ideas employeeshaven't even had.
Yet the jury saw through it.
They ruled for Pettersson,essentially saying your brain
doesn't belong to your boss Onceyou've left the building.
Speaker 1 (08:15):
It's a landmark, not just because of the money, but
because of the message.
Post-employment IP clauses havelimits.
You can't claim a futureinvention like it's leftover
office stationery.
Speaker 3 (08:27):
And, let's be honest, it's also just a great story.
The same inventor who took onbookies now topples Samsung From
brisket to billion dollardevices.
Pedersen's legal trail is onefor the IP history books.
Let's head into the thrillingworld of grammar, because, yes,
even phrasing can cost millionsIn this case.
(08:50):
A professor at the Universityof Michigan invented health
monitoring technology whileemployed there.
Apple later licensed thetechnology from the university,
but there was one major problemthe university didn't actually
own the patent rights.
Speaker 1 (09:07):
Why?
Because the university's IPpolicy said that researchers
agreed to assign inventions tothe institution.
That future tense phrasingmeant the rights weren't
automatically transferred.
The court ruled that this wasnot a present tense assignment.
The inventor, not theuniversity, held the rights and
(09:27):
Apple had licensed from thewrong party.
Speaker 3 (09:31):
So the inventor sued, claiming rightful ownership,
and the court sided with them.
What looked like a boring lineof policy language became the
deciding factor in a high stakespatent dispute.
Speaker 1 (09:47):
This is part of a growing body of case law that
highlights just how crucialcontract wording is.
Do hereby assign equals?
Transfer Will assign Not yet,and that gap can mean the
difference between institutionalownership and individual
control.
Speaker 3 (10:05):
A legal takeaway.
Universities and companies needto stop copy pasting IP clauses
and start calling their lawyersand inventors.
If your contract isn't specific, you just might have the last
word.
Let's rewind to a pivotal casethat became the grammar lesson
every IP lawyer now memorizes InStanford v Roche, disputes
(10:29):
centered around who owned therights to a breakthrough HIV
diagnostic tests.
A Stanford researcher, markHolodny, had signed agreements
with both the university and aprivate company, cetus, which
was later acquired by Rush.
Speaker 1 (10:46):
Here's the twist.
Stanford's agreement saidHolodny will assign future
inventions, but the Cetusagreement used the present tense
do hereby assign.
The courts ruled that thepresent tense do hereby assign.
The courts ruled that thepresent tense agreement took
priority.
That single verb choice handedownership of a major patent to
(11:07):
Roche and left Stanford withnothing.
Speaker 3 (11:10):
This wasn't just a university blunder.
It became a landmark SupremeCourt case in 2011 and continues
to be cited across employmentIP disputes, especially in
biotech.
Speaker 1 (11:23):
The takeaway Universities, startups, anyone
hiring innovators don't getcasual with your contract
language, and for inventors it'sa cautionary tale Know who
you're signing with and when.
If your agreements conflict,the one with the clearest and
present tense language coulddictate everything.
Speaker 3 (11:43):
Stanford B Roche isn't just about one test.
Stanford v Roche isn't justabout one test.
Speaker 2 (11:56):
It's about clarity, timing and why verbs can make or
break multimillion-dollarpatents.
Speaker 3 (12:01):
Intangiblia, the podcast of intangible law.
Playing talk about intellectualproperty, let's talk about one
of the boldest pivots in recentpatent law.
Traditionally, once an inventorassigns a patent to an employer
, that's it no backseats.
But the 2021 US Supreme Courtdecision in Minerva Surgical
Biologic shook that norm.
The case involved a medicaldevice patent and a challenge
(12:25):
brought by its original inventor.
The legal doctoring on thetable, a signer stoppel.
Speaker 1 (12:32):
Signer stoppel is basically the idea that if you
sell or sign your patent, youcan't later say it's invalid.
Like selling someone a car andthen telling the motor vehicle
authority it was neverroadworthy.
But here's the twist the courtsaid that if what you're
challenging came after theassignment, like new claims
added later, then game on, andin this case that mattered.
Speaker 3 (12:56):
The inventor said the company had expanded a patent
scope to cover something hedidn't actually invent.
The Supreme Court agreed.
You can't stop someone fromchallenging something they
didn't technically assign in thefirst place.
Speaker 1 (13:10):
This decision is huge for employee inventors.
It gives them back someleverage.
Just because you sign somethingover doesn't mean you surrender
forever, especially if your oldIP gets twisted into something
new.
Speaker 3 (13:22):
In other words your past self doesn't get to silence
your future self, and in thehigh stakes world of patent
litigation, that's a powerfulshift.
Sometimes you don't need a fullvictory, just a good start.
That's the message PolandSupreme Court sent in a 2020
case that turned heads acrossEurope.
(13:45):
The court ruled that, when itcomes to employee inventions,
remuneration isn't just aboutwhether a patent gets granted.
It's about effort and intent.
Speaker 1 (13:56):
The case involved an inventor who developed and
disclosed a patentable inventionduring his employment.
The employer filed a patentapplication, but the patent
hadn't yet been granted.
When the employee requestedcompensation, the company said
let's wait and see.
But the court said nope, filingtriggers rights.
Speaker 3 (14:16):
This is significant because in many jurisdictions
compensation is only owed if apatent is granted and
commercialized.
But Poland said the very act offiling shows the invention has
value.
So the inventor deservesrecognition and payment from
that point forward.
Speaker 1 (14:35):
It's a progressive take that puts the focus back on
the contribution itself, notjust the company's bottom line,
and for researchers workinginside large institutions, where
many filings never gocommercial, it's a welcome
precedent.
Speaker 3 (14:49):
In the storytelling arc of inventor justice.
This is that feel-good moment.
It says thanks for your brainwork, we see you.
Here's a case that played outin China, but with echoes in
workplaces everywhere.
Zhang, a diligent engineer at3M China, developed a successful
new product that ended upgenerating major revenue.
(15:10):
He expected a reward,specifically bonus compensation
under the company's incentivepolicy.
But when he came knocking, 3msaid sorry, our internal policy
doesn't require us to pay you.
Speaker 1 (15:25):
So Zhang sued, and the Shanghai High People's Court
didn't just agree with him.
They made a statement.
The court ruled that statutoryinventor rights under China's
patent law override internalcompany rules.
It didn't matter that 3M'sinternal HR policy tried to cap
(15:45):
or redirect compensation.
The law says inventors must berewarded for service inventions.
Jang's story also reflects adeeper legal principle that's
gaining traction globally If thelaw grants you a right, your
employer can't just memo it away.
Speaker 3 (16:01):
It's a classic case of David versus the memo machine
, and a win that will resonatewith employees in every lab,
factory and R&D office acrossthe country.
In South Korea, not everyinvention made on the job is
guaranteed a payout.
This case involved a medicalengineer who developed an
(16:22):
innovation while employed by amid-sized health tech company.
He filed for compensation underKorea's Invention Promotion Act
, expecting to be rewarded forhis contribution, but the court
said not so fast.
Speaker 1 (16:39):
The judge ruled that because the invention didn't
generate exclusive commercialbenefit for the company, meaning
it wasn't a dominant factor inthe company's revenue, the
engineer wasn't entitled toadditional remuneration.
Even though the invention wastechnically valuable, it didn't
meet the financial impactthreshold.
Speaker 3 (17:01):
That's a high bar.
In collaborative industrieslike medical devices, it's rare
for one innovation to carry theload alone.
This standard puts inventors ina tough spot.
If their contribution is foldedinto a larger ecosystem, how do
they prove their value?
Speaker 1 (17:18):
It's the dark side of value-based recognition.
Companies love it until you tryto quantify what your
creativity is really worth toquantify what your creativity is
really worth.
Speaker 3 (17:31):
This case shows that legal recognition of inventors
still varies wildly by country,and sometimes even a brilliant
idea can get lost in thecomplexity of product
integration and profitattributions.
Okay, let's zoom in on the partthat usually comes with fine
print and finance departmentsremuneration formulas.
Around the world, differentcountries have very different
(17:52):
approaches to how inventorsshould be compensated for their
work, and while they don't alluse the same math, most agree on
one thing Inventors should geta piece of the pie.
Speaker 1 (18:05):
Let's start with Germany.
Their Employee Inventions Actis basically a calculator
disguised as law.
It uses a three-part formula.
You multiply the exploitationvalue by both the inventor's
share and the personal share.
The result a precise,structured payout that considers
profit, team size and how muchinitiative the inventor brought
(18:26):
to the table.
Speaker 3 (18:27):
Meanwhile, China keeps it clear and minimum-based
.
The law mandates that inventorsreceive at least 2% of profits,
or 0.2% of the company'soperating income derived from
the patented invention.
It's simple math, but inhigh-volume sectors it adds up
(18:48):
fast.
Speaker 1 (18:49):
Japan takes a more flexible route.
The law requires reasonableremuneration, often calculated
through negotiation or policy.
It gives companies room, butalso demands fairness.
And, yes, japanese courts havestepped in when employers got
too stingy.
Speaker 3 (19:09):
Inventors only get compensated if their invention
brings an outstanding benefit tothe employer, like Shanks did
with Unilever.
It's a high bar, but when youclear it the payout can be
massive.
Speaker 1 (19:21):
And there's Poland where innovation effort is
enough.
You don't need to wait for agranted patent or commercial
success.
Just filing the patent cantrigger your right to
remuneration.
It's refreshing and empowering,especially for inventors in
academia and the public sector.
Speaker 3 (19:38):
Different formula, same goal To make sure the minds
behind the magic aren't leftempty handed.
Whether it's statutorypercentages or judicial
discretion, the wall is wakingup to the value of rewarding
innovation fairly.
Speaker 1 (19:54):
So here's to every inventor out there sketching
brilliance on napkins orprototyping in broom closets,
wherever you live, there's aformula and a fight to make sure
your genius gets its due.
Speaker 3 (20:08):
From beaver branded lawsuits to grammar induced
ownership flips, this episodeproved one thing when it comes
to workplace inventions, thefine print isn't just legal
fluff, it's your future.
Speaker 1 (20:20):
First invention.
Timelines matter, whether youridea was born before, during or
even after your job.
What you sign and when candefine your rights, protect your
past work, clarify your presentduties and don't give away your
future too easily.
Speaker 3 (20:36):
Second, clarity in contracts is key.
A single word or tense canchange who owns what.
Employment agreements aren'tjust paperwork.
They are roadmap for yourrights.
Speaker 1 (20:50):
Third inventor pay systems vary around the world,
but the message is shared.
If your work creates value, youshould see some of it.
Whether that's through formulas, statutory rights or court
intervention, recognition isrising.
Speaker 3 (21:04):
And finally, national laws can offer protection even
when company policies fall short.
Legal frameworks are evolvingto honor creativity and
contribution, even when theemployer's memo says otherwise.
Speaker 1 (21:17):
So, whether you're building something brilliant in
a lab, an office or a garage,know your rights, read the fine
print and celebrate yourcreativity.
Speaker 3 (21:26):
Thanks for tuning in to Intangiblia.
New episodes every Tuesday inEnglish and Spanish.
Visit intangibliacom and don'tforget to patent your brilliance
.
Speaker 1 (21:38):
Before someone else does.
Speaker 2 (21:40):
Thank you for listening to Intangiblia, the
podcast of intangible law plaintalk about intellectual property
.
Did you like what we talkedtoday?
Please share with your network.
Do you want to learn more aboutintellectual property?
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
(22:00):
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
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