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United States: Suffolk Superior Court Rules Massachusetts General Hospital IP Policy Is Enforceable Against A Urologist Who Created An Invention For Voice Training On His Own Time And At His Own Expense
Often an employer will require an employee to sign an
invention assignment agreement before starting to work for the
employer, which frequently states that any inventions that an
employee creates while working for the employer shall become the
employer's property. Last month, such an agreement was
put to the test and survived. Judge Peter Lauriat of the
Suffolk County Superior Court Business Litigation Session
ruled that an IP Policy agreement between a staff
physician and Massachusetts General Hospital (MGH) was
enforceable and was not an unreasonable restraint on trade.
The physician agreed to the IP Policy, which stated that MGH shall
own all staff inventions "that arise out of or relate to the
clinical, research, educational or other activities of the Inventor
at [MGH]," to receive staff privileges at MGH. Early
this year, the physician, a urologist, created an invention
"for voice training to help a musician harmonize and a singer
to sing notes more precisely, and/or to improve tonal precision for
tone deaf people." The device also "would enable
mute patients, who had a laryngectomy or removal of vocal cords, to
phonate [utter speech sounds]." The physician created
the invention outside the hospital, on his own time and at his own
expense, but the invention "utilizes or incorporates
knowledge" he "generated or acquired in the course of his
clinical, research, educational, or other activities as a member of
the professional staff at MGH." The physician filed suit
for a declaration from the court that the IP Policy was an
unenforceable restrictive business covenant as applied to
him. Essentially, the physician argued that "MGH's
ownership of both medical and non-medical inventions that
incorporate knowledge 'generated or acquired in the course
of' his tenure at MGH, but which were created outside the
hospital and on his own time, is an unreasonable, oppressive and
unduly harsh restraint on trade."
Judge Lauriat disagreed and granted summary judgment for
MGH. First, Judge Lauriat determined that, under the
plain terms of the IP Policy, the physician had to assign his
rights to an invention to MGH if that invention arises out of his
activities at the hospital. Because the physician admitted
that the voice box invention arose out of his activities at MGH, it
had to be assigned to MGH. Second, he concluded that the IP
Policy was not unreasonable because the physician benefited from
the resources and prestige of MGH in exchange for contributing to
the research and educational objectives of the Urology
Department. In fact, there was a public interest in
MGH's sharing staff inventions to further research and benefit
patients.
This case simply shows yet again that most agreements will be
enforced as written. Employees should understand the terms of
agreements they are signing because later attempts to
escape an agreement's requirements often are not
successful.
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