A critical component of IP Management is the acquisition of IP.\u00a0 It is therefore appropriate that the inaugural post of this blog addresses acquiring ownership of inventions — in this case employee inventions.\u00a0 An employer does not automatically own the inventions or its employees merely by virtue of the employer\/employee relationship.\u00a0 The employer only owns inventions that the employee has agreed to assign.\u00a0 Sometimes this agreement is implied, for example when the employee is specifically hired to invent or is later assigned the task of inventing.\u00a0 However, most times agreement is express.\u00a0 Such an agreement can be oral, but as the saying goes, oral contracts aren’t worth the paper they are printed on.\u00a0 An agreement with an employee to assign inventions should be in writing.<\/p>\n
What should this written\u00a0agreement say?\u00a0 After Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc<\/em>., 583 F.3d 832, 842 (Fed. Cir. 2009),\u00a0we know that an agreement to assign, is just that — an agreement to do something in the future.\u00a0 <\/em>Such an agreement can be trumped by an automatic assginment.\u00a0 Thus is seems prudent to combine\u00a0a promise to assign with\u00a0a present assignment:<\/p>\n I agree to assign, and hereby do assign, to Employer all right, title, and interest in and to the Inventions.<\/strong><\/p><\/blockquote>\n Of course, this leaves open the question of what is an “Invention,” but that is a topic for another pose.<\/p>\n <\/p>\n","protected":false},"excerpt":{"rendered":" A critical component of IP Management is the acquisition of IP.\u00a0 It is therefore appropriate that the inaugural post of this blog addresses acquiring ownership of inventions — in this case employee inventions.\u00a0 An employer does not automatically own the … Continue reading