Overview

In an employee or independent contractor intellectual property (IP) agreement, it is critical to clearly spell out all ownership rights for the protection of a company's patents, trademarks, copyrights, product development, plans, and trade secrets. Under an IP agreement, the employee or independent contractor assigns and transfers all rights, title, and interest in and to IP developed for the employer.

The agreement addresses the legal aspects of IP ownership, confidentiality, invention assignments, non-disclosure, non-competition, and whether employee off-the-clock inventions or work are included in the agreement. The agreement may also contain provisions for the inventor to cooperatively obtain and maintain patents and other legal protections.

A carefully prepared agreement that conforms to any relevant state laws will help avoid future disputes. It is also prudent to identify any works an employee developed prior to employment to reduce the risk of future controversies. In addition to protecting the employee's rights to past work, it may keep the employer from being dragged into disputes with the employee's past employers.

The employee IP agreement can be part of an employee agreement stated in company policies or in a separate agreement addressing transfer of specific work. It is important to note the default rule for patents is that they are owned by the inventor. The only way to pre-empt this rule is for a company to require employees to sign a transfer agreement.

Copyright is actually a bundle of rights: the right to copy, the right to make derivative works, the right to perform, and the right to display. These rights are divisible and can be separately assigned or licensed, depending on the scope of rights the company requires from the inventor.

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