For many businesses, intellectual property is the glue that holds the company together. These assets provide financial – and job – security for many. With this in mind it’s a wonder that so many companies do not have invention assignments in place.
The two most noteworthy types of employee-created intellectual property are patentable inventions and copyrightable works. While many employers may assume that all work created under the company’s direction is property of the employer, this is not the case. Copyrights are presumptively property of the employer and inventions are presumptively property of the employee. Invention assignment agreements are therefore indispensable when it comes to ensuring that the employer holds onto all IP rights to the greatest possible scope of its employees’ creations.
As no employer wants to see these assets leave with the employee, this is where a properly drafted agreement comes in. An employee invention assignment agreement is a critical tool for protecting a business’s intellectual property. As with any employment document, there are numerous laws governing what can and cannot be inside of these agreements.
For example, California Labor Code § 2870 provides:
“Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either:
(1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or
(2) Result from any work performed by the employee for the employer.”
Generally speaking, invention agreements should be drafted to incorporate the broadest possible range of intellectual property. In addition to inventions, conceptions, discoveries, improvements, and original works of authorship, an employer should consider including an assignment of “know-how” and “ideas” learned or created by the employee while employed.
For more information on how to protect your company’s intellectual property, contact experienced attorney Drew E. Pomerance today.
