Patent Ownership Rights: Structuring Assignment and Employment Contracts

This CLE webinar will guide counsel on securing patent ownership of inventions created by employees or independent contractors. The panel will discuss essential provisions and strategies when structuring employee assignments and contractor agreements. The presenters will discuss the implications for litigation when the assignment is not explicit and other pitfalls in structuring these agreements.

Most companies wrongly assume they automatically own the inventions created by their contractors and employees in the context of their employment. To avoid costly disputes, companies should be proactive in securing ownership of the invention.

The Federal Circuit has issued several decisions addressing the pitfalls of a company's attempt to secure the ownership of patent rights through an employment agreement. For example, in Whitewater West Industries Ltd. v. Alleshouse (2020), the court found that a provision in an employment agreement requiring assignment of post-employment inventions was invalid under California law. As a result, the company did not own the patent in question. Similarly, in Core Optical Technologies, LLC v. Nokia Corp. (2024), the court vacated a decision by the district court that an invention made by an employee was owned by his former employer.

To avoid disputes over patent ownership, counsel to companies must secure rights for employee-created or contractor-created inventions and ensure employees, consultants, and independent contractors sign confidentiality and invention assignment agreements.

Listen as our authoritative panel of patent attorneys discusses the patent ownership challenges facing companies with inventor-employees or contractors. The presenters will discuss key provisions and strategies when structuring employee assignment agreements and contractor agreements. The panel will also discuss the implications for litigation when the assignment isn't specific and other pitfalls when structuring these agreements.