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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