Employee-Created Intellectual Property: Securing Ownership Rights in a Remote Working Environment

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

A live 90-minute premium CLE video webinar with interactive Q&A


Tuesday, November 2, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, October 8, 2021

or call 1-800-926-7926

This CLE course 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 of the IP. Further, as employees are now often working remotely, companies must understand that this could lead to claims that design and/or activities related to inventions are occurring in a place where they are using the employee's resources, including technology and home, rather than the company's resources.

Written agreements can avoid IP ownership issues with employees and contractors. Absent an agreement, consultants and independent contractors may be able to resell or make derivative works of the work created for the company. To avoid such a situation, agreements should contain appropriate provisions for works created during employment, previously created works and address any preexisting obligataions of the employee or independent contractor.

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

Listen as our authoritative panel of IP attorneys examines the challenges facing companies with 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 IP counsel should employ to ensure ownership of employee or contractor-created IP?

Faculty

Boyd, Felicia
Felicia J. Boyd

Partner
Norton Rose Fulbright US

Ms. Boyd is a litigator with extensive experience as a leader in complex IP disputes involving patents,...  |  Read More

Additional faculty
to be announced.
Attend on November 2

Early Discount (through 10/08/21)

Cannot Attend November 2?

Early Discount (through 10/08/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

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