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

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

Conducted on Tuesday, November 2, 2021

Recorded event now available

or call 1-800-926-7926
Course Materials

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.


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.



  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


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?


Boyd, Felicia
Felicia J. Boyd

Norton Rose Fulbright US

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

Gard, Elizabeth
Professor Elizabeth Townsend Gard

Director of the Tulane Center for IP, Media & Culture
Tulane University

Prof. Gard specializes in Intellectual Property law, including copyright, trademark, and comparative intellectual...  |  Read More

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