Brief Advice: When Employees Claim Inventions

LexisNexis Martindale-Hubbell posed the following question to provide a variety of views on this important topic:

How can in-house counsel ensure that the ownership of an invention vests with the

company rather than with an employee who may claim inventorship?

In the high-stakes world of intellectual property, companies need to ensure that their inventions are clearly theirs, with no question of competing claims. In-house counsel should constantly educate employees inside and outside IP and R&D divisions that the company, not the individual, is the owner. This education begins before an employee is hired and continues after resignations are announced.

Response:

Jane E. Caskey

Partner

It is critical that companies educate new employees about the importance of maintaining confidential inventions as a component of IP protection. In Canada, nonconfidential disclosures of possible inventions or inventions before patent application filing will invalidate patents (s.28.2(1)(a) Patent Act).

While Canada provides a one-year grace period wherein a patent application may be filed following a nonconfidential disclosure, given the dire consequences of public disclosures on the patentability of possible inventions, companies should educate their employees about the importance of maintaining confidentiality and require employees to sign nondisclosure agreements to prevent premature disclosure.