UIC John Marshall Journal of Information Technology & Privacy Law


Jim C. Lai


Critizing the Alcatel USA, Inc. v. Brown court’s holding that a company owned rights to a software idea that existed entirely in the thoughts of one of it’s former employee’s. Discusses how the court did not take into account that (1) the invention disclosure agreement it secured from the employer was unenforceable, (2) the Solution was not an “invention” as recognized by U.S. intellectual property law, and (3) the development of an automatic decompiler was not within the scope of the company’s business or employee’s work. Arguing while it is reasonable for an employer to require its employees to disclose to it any inventions they might develop while working at their jobs, no employer should be able to claim a total ownership interest in the thoughts of its employees, especially when those thoughts were based in substantial part on an employee’s prior knowledge and when the discovery at issue came as a flash of inspiration far removed from the workplace.