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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, October 22, 2024

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

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.

Faculty

Felicia J. Boyd
Partner
Norton Rose Fulbright, LLP

Ms. Boyd is a litigator with extensive experience as a leader in complex IP disputes involving patents, copyrights, trademarks, and trade dress--both in and out of court--spanning a diverse array of industries, including financial and investment services, medical devices (such as pacemakers, heart valves, defibrillators, and synchronization devices), software, music, pharmaceuticals, and manufactured goods. With more than three decades of practice, she has obtained several victories as a litigator, including preliminary injunction motions, summary judgment motions, favorable settlements, and jury verdicts at trial. Ms. Boyd has significant experience with complex case management and the coordination of global discovery efforts. She effectively designs and implements litigation strategies consistent with client objectives. 

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Timothy P. McAnulty
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. McAnulty practices all aspects of patent law, including district court litigations, post-grant proceedings, due diligence, strategic counseling, and portfolio development. He represents clients across a wide range of technologies and works closely with them to develop strategies aligned with their business goals. Mr. McAnulty focuses on contentious patent proceedings before the USPTO, including proceedings before the PTAB, reexaminations, and interferences. Throughout his career, Mr. McAnulty has conducted numerous due diligence investigations and FTO studies, working with both acquiring companies and target companies through investment rounds, acquisition, and IPOs. He has helped many clients develop comprehensive patent portfolios with strategies toward enforcement, competitive landscaping, licensing, and protecting commercial embodiments. Mr. McAnulty co-leads the firm’s manufacturing industry group.

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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 as well as previously created works and address any preexisting obligations 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.

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?