Assuring Clear Assignment of Employee Inventions

December 13, 2011

Hamilton Brook Smith Reynolds Alert

In a prior alert that referred to the Stanford v. Roche U.S. Supreme Court Decision, we noted the importance of drafting employee agreements that avoid mere promises to assign rights in the future. Employees should “hereby assign” their invention rights to employers.

Additional protection can be obtained by including similar language in invention disclosure forms that will assure assignment of individual inventions. An appropriate clause to include in your invention disclosure form follows:

I (we) confirm assignment of, and do hereby assign, all right, title and interest to all inventions of this disclosure to [COMPANY NAME] and agree to execute all documents as requested for obtaining, sustaining and reissuing, and assigning to [COMPANY NAME] all rights in, any patent application filed on any invention of this disclosure, and to cooperate with [COMPANY NAME] in protecting any invention of this disclosure.

Please contact us if you have any questions.

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December 13, 2011

Hamilton Brook Smith Reynolds Alert

In a prior alert that referred to the Stanford v. Roche U.S. Supreme Court Decision, we noted the importance of drafting employee agreements that avoid mere promises to assign rights in the future. Employees should “hereby assign” their invention rights to employers.

Additional protection can be obtained by including similar language in invention disclosure forms that will assure assignment of individual inventions. An appropriate clause to include in your invention disclosure form follows:

I (we) confirm assignment of, and do hereby assign, all right, title and interest to all inventions of this disclosure to [COMPANY NAME] and agree to execute all documents as requested for obtaining, sustaining and reissuing, and assigning to [COMPANY NAME] all rights in, any patent application filed on any invention of this disclosure, and to cooperate with [COMPANY NAME] in protecting any invention of this disclosure.

Please contact us if you have any questions.

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