A critical component of IP Management is the acquisition of IP. It is therefore appropriate that the inaugural post of this blog addresses acquiring ownership of inventions — in this case employee inventions. An employer does not automatically own the inventions or its employees merely by virtue of the employer/employee relationship. The employer only owns inventions that the employee has agreed to assign. Sometimes this agreement is implied, for example when the employee is specifically hired to invent or is later assigned the task of inventing. However, most times agreement is express. Such an agreement can be oral, but as the saying goes, oral contracts aren’t worth the paper they are printed on. An agreement with an employee to assign inventions should be in writing.
What should this written agreement say? After Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832, 842 (Fed. Cir. 2009), we know that an agreement to assign, is just that — an agreement to do something in the future. Such an agreement can be trumped by an automatic assginment. Thus is seems prudent to combine a promise to assign with a present assignment:
I agree to assign, and hereby do assign, to Employer all right, title, and interest in and to the Inventions.
Of course, this leaves open the question of what is an “Invention,” but that is a topic for another pose.