Employee-Created Intellectual Property: Securing Ownership Rights

Structuring Assignment Agreements and Third-Party Contractor Agreements, Navigating Carve Outs and Preexisting Obligations

Recording of a 90-minute CLE webinar with Q&A


Conducted on Monday, November 23, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide IP counsel with guidance on securing ownership to IP created by employees or independent contractors. The panel will discuss strategies for structuring employee assignment agreements and third-party contractor agreements. The panel will also address key provisions, carve outs, preexisting obligations and other hurdles to ensuring ownership.

Description

Most companies wrongly assume they own their contractors’ and employees’ IP created in the context of their employment. To avoid costly disputes companies should be proactive in securing ownership in the IP.

Written agreements can avoid IP ownership issues with employees and contractors. Absent an agreement, consultants and independent contractors can resell or make derivative works of the work created for the company. The agreement should contain a carve-out provision for previously created works and preexisting obligations the employee or independent contractor has.

If the company is involved in a merger, acquisition or investment there can be significant consequences as a result of failing to have exclusive IP ownership. The lack of ownership in IP may put a halt to financing or a deal. To avoid disputes over IP ownership, counsel to companies must secure rights for employee-created or contractor-created IP and ensure employees, consultants and independent contractors sign confidentiality and invention assignment agreements.

Listen as our authoritative panel of IP attorneys examines the challenges facing companies that have employees or third-party contractors creating IP. The panel will discuss key provisions and strategies when structuring employee assignment agreements and third-party contractor agreements. The panel will also address carve outs, preexisting obligations and other hurdles to ensuring ownership.

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Outline

  1. Structuring employee assignment agreements
  2. Structuring third-party contractor agreements
  3. Navigating carve outs and preexisting obligations
  4. Best practices for ensuring ownership of employee-generated IP

Benefits

The panel will review these and other key issues:

  • What key provisions should counsel include in employee assignment agreements?
  • What hurdles must counsel watch for to establish ownership of employee or contractor-created IP?
  • What are strategies should IP counsel employ to ensure ownership of employee or contractor-created IP?

Faculty

Joel B. Ard
Joel B. Ard

Member
Foster Pepper

Mr. Ard focuses his litigation practice on the defense of patent infringement claims and challenges to patent validity...  |  Read More

Feingold, Stephen
Stephen Feingold

Partner
Kilpatrick Townsend & Stockton

Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex...  |  Read More

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