Counsel to Counsel - November 2008 - (Page 3) INT ELLEC T uA L Pr oP ErTy Claim Inventions Illustrations by Holly Haugen Thomas A. Polcyn Partner Thompson Coburn LLP tpolcyn@thompsoncoburn.com Peer Review Rated Absent an agreement to the contrary, the owner of an invention is presumed to be the inventor, not the inventor’s employer. Written employee agreements expressly assigning inventions to the company are the only sure-fire way to ensure that a company will have the right to exploit employee inventions. Absent such an agreement, limited recourse may exist under the “employed to invent” and “shop right” doctrines. However, in both cases, the analysis is fact-intensive, litigation is expensive, and as with all judicial determinations, the outcome will be uncertain. Toni-Junell Herbert Partner Patton Boggs LLP therbert@pattonboggs.com John S. Hilten Partner McGuireWoods LLP jhilten@mcguirewoods.com Unless patents and IP ownership are a priority throughout a company, many people in departments such as HR don’t realize they should be concerned with them. Along with requiring new hires to sign contracts acknowledging their obligations to assign IP, HR needs to follow through at the exit interview. During the exit process, departing employees should sign contracts reaffirming that they have complied fully with the terms of the employment agreement and that all inventions have been brought to the attention of the company and all files have remained with the company. Companies should be diligent to ensure employee agreements address invention ownership and that throughout their tenure employees execute assignment documents for any inventive activities. Companies should also include a review of any inventive activities by an employee during exit processing. As an additional safeguard for critical high technology R&D employees, the employer may want to execute an inventor name search in U.S. Patent and Trademark Office databases from time to time. For more information about these lawyers and their firms, please visit www.martindale.com. www.martindale.com/c2c November 2008 03 http://www.martindale.com http://www.martindale.com/c2c
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