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Technology - Assignment of Inventions Agreements

An invention assignment agreement is an agreement signed by an employee or consultant of a company upon hiring that requires the employee or consultant to disclose all innovations made, conceived, developed, or reduced to practice during his or her employment or engagement with the company and to assign all right, title, and interest in all such innovations, including rights in any patents, copyrights, trade secrets, rights of priority, and other proprietary rights, to the company. An invention assignment agreement also typically requires employees and consultants to assist and cooperate with the company to execute and enforce all documentation necessitated by the assignment or required by a government agency during the registering of intellectual property. Furthermore, such agreements should require the employee or consultant to list any preexisting innovations that should be excluded from the assignment so that any new innovations are more clearly identifiable.

The consequences of failing properly draft an assignment agreement may be harsh. If an employee breaches his or her invention assignment agreement, the employer's only recourse may be a breach of contract action. Because it is typically the case that the employee assigns the invention to a company he or she founds or sells it to a bona fide purchaser for value, such a breach of contract action may provide cold comfort. If a company wants to rely on that employer's invention assignment agreement as a defense, the contract may not provide the coverage a client needs.

Ownership of intellectual property - patents in particular - is critical both in the business world and in court. Businesses routinely rely on assignment of invention agreements to determine the allocation of invention rights. Such contracts are critical because employment alone does not oblige an inventor to assign a patent to his or her employer. Not all assignment of invention agreements are created equal, however. Will the assignment of invention agreement on which a company might rely for its litigation defense survive the rigors of litigation and emerge battle-tested, or will it not be worth the paper on which it was written?