• Brief Advice: When Employees Claim Inventions
  • October 28, 2008 | Author: Daniel N. Daisak
  • Law Firm: Duane Morris LLP - Hamilton Office
  • 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:

     

    Daniel N. Daisak

    Partner

     

     

    As part of the standard new hire paperwork, employees should sign an agreement that obligates them to assign rights in inventions developed within the scope of their employment to the employer.

    If a current employee didn’t sign an IP agreement when he/she was hired and now refuses to assign the invention, look to the company policy handbooks for ownership support. If a retroactive program is being implemented to correct for past omissions, check with counsel, because some states may not recognize the promise of ongoing employment as sufficient consideration.