It is critical to clearly spell out all ownership rights in an employee or independent contractor intellectual property agreement 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 intellectual property 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, conforming 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 intellectual property 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.

Practice Contacts

Jump to Page

By using this site, you agree to our updated Privacy Policy and our Terms of Use