In a college town such as Tucson, issues often arise regarding the creation and ownership of intellectual property in a university setting. For instance, a professor, university employee or student may develop or assist in the development of intellectual property (either in conjunction with the university, or completely autonomously and without use of any university resources) and then claim ownership of, or otherwise desire to use, the intellectual property that has been created.

The general rule is the same whether the intellectual property is created in a university setting or within a normal private company. Typically, and absent an agreement to the contrary, the employee owns any intellectual property he or she creates, even if it was created during the course of employment. Universities and other employers often avoid this result by having employees sign Non-Disclosure and Assignment of Intellectual Property Agreements (Agreement) that specifically assign any intellectual property created by the employee to the employer. However, even if an employee does not execute an Agreement, the employer may own intellectual property developed by that employee if the employee was specifically “hired to invent” or was tasked with solving a specific problem. Moreover, in cases where it is determined that the employee owns the intellectual property, the employer may retain a license to use the intellectual property if it was developed using the employer’s resources.

Employers and entrepreneurs working in technology intensive fields would be well served to develop and implement company-wide intellectual property policies, and to have employees sign Non-Disclosure and Assignment of Intellectual Property Agreements before they begin work on sensitive or proprietary projects.