This article posted on our partner site Mondaq.com provides practice pointers for employers executing Employee Intellectual Property Assignment Agreements. The author uses a US Federal Circuit decision that involved an ownership dispute over a patent for a former employee’s invention, to remind businesses to refer directly to an IPAA in an offer of employment (or make the offer of employment contingent upon execution of the IPAA, if possible), use clear language to establish the assignment in an IPAA, use present assignment as opposed to an agreement to assign, and allow only sufficiently described inventions to be excluded under an IPAA. It’s normal for an employer (and business investor) to require that work product developed during work time is owned by the business, and businesses will often represent that this is the case when seeking or taking on investment. This is a good article to read for understanding the boundaries and concerns related to the transfer of employee intellectual property to a company.
Ownership of Intellectual Property