Protecting Your Ownership of Employee-Created Intellectual Property

An employer might assume that any intellectual property created by an employee in connection with the employee’s job duties will automatically become the exclusive property of the employer. However, without taking the necessary measures to ensure this, that assumption could prove incorrect.

Employee Inventions Where There Is NO Enforceable Assignment-of-Inventions Agreement.

Often, in the absence of an assignment-of-inventions agreement, an employee presumptively owns any inventions that he or she creates that are entitled to protection under applicable trade-secret or patent law. This means that the employer may have no ownership interest in an employee-created invention, even if the invention was developed on company-time or where the employee used company resources and facilities. There is no U.S. law that compels an employee to assign his or her rights and inventions to the employer.

Employee Inventions Where There Is an Enforceable, Written Assignment-of-Inventions Agreement. 

In the event there is an express and enforceable assignment-of-inventions agreement, the assignment-of-inventions agreement will supersede any rights of state common-law with respect to ownership interests. Therefore, it is clearly in the company’s best interests to require its employees to sign an enforceable and properly-worded assignment-of-inventions agreement before the employee begins employment with the company. The agreement must specifically and clearly assign all of the employee-inventor’s rights to the company and should also require the employee to assist the company in obtaining any applicable rights. In addition, these agreements generally must be fair, and in most cases, cannot broadly require the assignment of all inventions and/or intellectual property rights, especially if such rights have no relation to the company business. Illinois has laws that limit the effectiveness of assignment-of-inventions agreements where the invention was created outside the inventor’s employment with the company.

For an assignment-of-inventions agreement to be enforceable, it must conform to the general principles of contract law. To ensure your compliance with the law and maximize the benefit you could gain from a properly instituted assignment-of-inventions agreement, you should contact an attorney who specializes in Illinois business law.