One of the most important parts of intellectual property, which tends to be overlooked, is establishing ownership of intellectual property. In many cases, employees are hired without having to sign any type of employment agreement, or if they do sign an employment agreement, it does not contain the language that establishes ownership of intellectual property created during the course of their employment.
If ownership is not established, it can be a fatal flaw in the ability to enforce a business’ intellectual property rights. For patents, especially, dire and unforeseen consequences can occur if in trying to establish property rights abroad.
The main point to establishing ownership is to stake your claim at inception—that is, have an assignment executed as early as possible. Here are just a few tips that can be generally applied, but are more relevant to patent protection:
1) Consider having a lawyer experienced in intellectual property matters review your employment agreements to make sure the business has ownership of the various forms of intellectual property, such as patents, copyrights, and the like.
2) Make sure your employees, especially key employees such as engineers and marketing/sales representatives, sign the employment agreements.
3) Save the signed employment agreements in a secure place where they can easily be found and tracked. Nothing is worse than having employees sign agreements that cannot be found later when they are most needed.
4) If you have not already done so, establish an invention disclosure program in which employees memorialize and record their various inventions for your business. By memorializing the invention, it is easier to establish the employee invented a particular invention during the course of their employment.
5) In the invention disclosure, consider incorporating an assignment that immediately assigns the rights for the invention to the business. In today’s economy, employees often tend to move between jobs, and sometimes, it is extremely difficult to locate them later to have them execute an assignment. Having the assignment within the invention disclosure helps avoid any later difficulty in locating the employee, especially one that has left on less than desirable terms. It is a simple thing to do, considering the employee is typically signing the invention disclosure anyway. While having the assignment in the invention disclosure might not be perfect, especially if the invention changes, it is better than having nothing.
6) Have the employee sign a formal assignment for the patent application as early as possible and have it recorded as soon as possible. Even have the inventors sign an assignment for provisional applications. This may help avoid any problems with proper title that is required by many foreign patent offices. In particular, some foreign patent offices require continuity of applicants between applications. For example, if no inventor signs an assignment to a business for a US Patent Application before a PCT application claiming priority to it is filed and the PCT application only lists the business as the applicant (i.e., not the inventors), the ability for that business to claim priority to the earlier-filed US patent application may be lost once nationalized in some foreign countries because of a lack of continuity of applicants between the applications.
In summary, businesses often discover too late that former employees were not required to assign various forms of intellectual property to the business. By taking some proactive steps to ensure your business has ownership of its intellectual property, you can avoid significant headaches and legal fees in the future.