What is an Invention Assignment Agreement: When an Employee Assigns Intellectual Property to its Employer

What is an Invention Assignment Agreement?

For those involved in Research and Development as well as other technical work, you may be required to sign agreements with your employers. These agreements entail ownership of any inventions created while employed to the employer, although there are restrictions imposed on this practice in California.

If the employee is to sign a contract with an invention assignment agreement in place, then they are to be given a written notice of all the terms as well as any existing restrictions. These terms and restrictions may either be present in the contract, or through an employee manual or guideline.

 

Restrictions

Although employees can still sign the Invention Assignment Agreements, there are certain exemptions in California law. Exceptions include: inventions made in an employee’s own free time, without the use of the employer’s equipment, supplies, facilities, or trade secrets.

If the invention relates back to the employer, then the Invention Assignment Agreement is still in place, and all patent rights are still given to the employer.

If the employee attempts to license or patent any invention by disregarding the Invention Assignment Agreements, then the employer has full right to sue you for breaching your agreement. If they win the lawsuit, you will have to pay monetary damages while also handing over the rights of the invention.

 

Required Provisions

When presented with the invention assignment agreement, there will be three types of provisions: the assignment provision, disclosure provision, and waiver provision.

Assignment Provision

The assignment provision is what requires employees to sign over their inventions to the employer, although what has to be signed over can vary from only employee inventions to anything the employee creates, including ideas.

Disclosure Provision

A disclosure provision makes it required for employees to inform employers of any inventions created. This provision is usually limited, although some will cover anything created during the employment period. Please note that this is illegal in California.

Waiver Provision

The waiver provision is present in many agreements that require employees to list any and all inventions conceived and/or patented before they started work with the new company.

Once this list is created, they are to then waive any right to claim patent or intellectual property rights to any more inventions as created before the start of their employment.

Therefore, if there is such a provision present in your contract, it is best to list any and all inventions, even those that are not patented as you could potentially lose rights to them.

 

Do you need an Invention Assignment Agreement? Click here. Sam Mollaei, Esq. from Mollaei Law can be reached @ (818) 925-0002 or by visiting MollaeiLaw.com

This post is written by Maggie Pa, a UCLA Class of 2017 student with vast experience in social media and marketing.