Disclosing pre-existing inventions

Posted by Michael Shimokaji | Apr 24, 2014 | 0 Comments

Question: Disclosing inventions in employment contract

I was offered a job in which I need to disclose all pre-existing inventions and assign all future inventions that were not disclosed to them.

I am an inventor and the job is basically an inventor-in-residence position. Do you have any tips for making the disclosures? Not everything is patented but there are a number of my ideas I want to protect which others are working on developing. Can I simply describe each in a paragraph or two and will that suffice?

Answer: Disclosing pre-existing inventions will keep separate inventions you own and inventions your new employer will own.

Therefore, you should be as complete as possible in disclosing your pre-existing inventions, but not to the extent of disclosing the invention itself. For example, if you invented a new engine with a special piston, you could identify your invention as an engine with a special piston, but not disclose the aspects which make the piston unique.

It does not matter whether your pre-existing inventions are patented or not for purposes of this disclosure. 

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.

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