ASSIGNMENT OF INVENTION TO EMPLOYER

Posted by Michael Shimokaji | May 09, 2019 | 0 Comments

QUESTION: How can I clear up an Assignment of Invention contract with a future employer? I am currently reviewing a Non-Disclosure & Developments agreement that says: ” . . . [any Developments made during the Employment Period] that (i) relates to the business of the Company or any of the products or services being developed, manufactured or sold by the Company or which may be used in relation therewith, . . .” I would like to make this statement less vague so that any research or development that I make on my own time is not immediately forfeited to the company. My initial thought was to alter the statement to: ” . . . [any Developments made during the Employment Period] that (i) DIRECTLY relates to the business of the Company AND any of the products or services being developed, manufactured or sold by the Company or which may be used in relation therewith, . . .” but I'm not sure if this is concrete enough. The rest of the contract looks fine to me, but this was the only vague statement that I take issue with. I am not hoping to alter the statement so that I can steal any IP or developments that would reasonably belong to the company, but I would like to maintain a claim to any IP that I develop on my own time, with my own property.

ANSWER: The difficulty with either language relates tot he word “relates”. That is always subject to interpretation. If you really think you will be inventing a product – even on your own time – that might “relate” to your employer's business, you might want to consider declining employment. Otherwise, you would likely be obligated to assign it to your employer – under your language and your employer's language. 

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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