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

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.