Patent Ownership Rights: Structuring Assignment and Employment Contracts

Key Provisions, Implications for Litigation, Recent Court Treatment

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

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Conducted on Thursday, April 21, 2022

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Course Materials

This CLE webinar will guide counsel on securing patent ownership to inventions created by employees or independent contractors. The panel will discuss essential provisions and strategies when structuring employee assignments and contractor agreements. The presenters will discuss the implications for litigation when the assignment is not explicit and other pitfalls in structuring these agreements.

Description

Most companies wrongly assume they automatically own the inventions created by their contractors and employees in the context of their employment. To avoid costly disputes, companies should be proactive in securing ownership of the invention.

The Federal Circuit has issued several decisions addressing the pitfalls of a company's attempt to secure the ownership of patent rights through an employment agreement. For example, in Advanced Video Technologies Inc. v. HTC Corp. (2018), the employment agreement in question contained three provisions related to ownership of patent rights, but the court held that none of the provisions were sufficient to confer ownership of the patent at issue. Similarly, in Whitewater West Industries Ltd. v. Alleshouse (2020), the court found that a provision in an employment agreement requiring assignment of post-employment inventions was invalid under California law. As a result, in both cases, the company did not own the patent in question.

To avoid disputes over patent ownership, counsel to companies must secure rights for employee-created or contractor-created inventions and ensure employees, consultants, and independent contractors sign confidentiality and invention assignment agreements.

Listen as our authoritative panel of patent attorneys discusses the patent ownership challenges facing companies with inventor-employees or contractors. The presenters will discuss key provisions and strategies when structuring employee assignment agreements and contractor agreements. The panel will also discuss the implications for litigation when the assignment isn't specific and other pitfalls when structuring these agreements.

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Outline

  1. Employment contracts with patent inventors or contractors
    1. Ownership of IP created before, during, and after employment
    2. Key provisions in assignment agreements, including confidentiality and consideration provisions
    3. Potential pitfalls when structuring assignments
  2. Implications for patent prosecution and litigation and recent court treatment
  3. Best practices for ensuring ownership of employee-created inventions

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 inventions?
  • What strategies should counsel employ to ensure ownership of employee or contractor-created inventions?

Faculty

Hrivnak, Bret
Bret A. Hrivnak

Partner
Hahn Loeser & Parks

As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international...  |  Read More

Kacedon, D. Brian
D. Brian Kacedon

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across...  |  Read More

Noonan, Kevin
Kevin E. Noonan, Ph.D.

Partner
McDonnell Boehnen Hulbert & Berghoff

Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents...  |  Read More

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