So, your trademark is registered with the U.S. Patent and Trademark Office, you’ve obtained copyright registration for your original materials through the US Copyright Office, and an employee agreement is now part of your new hire packet.
You may believe your intellectual property safeguarding efforts are complete – but have you explicitly established ownership of the company’s intellectual property within those hiring documents?
You should consider– if materials were created outside the ordinary course of duties that an employee was specifically hired to perform, the end creation or product often legally belongs to the creator… unless there is an explicit agreement to the contrary.
Your staff can (and hopefully will) create intellectual property over the course of their employment term with you. So it is vital to set forth appropriate terms in your employment agreement in order to protect these highly valuable company assets.
An experienced IP attorney will be able to help you develop exact terms based on your company and the types of products and services created by it. Here are some of the general concepts that absolutely should be included, using clear and concise language:
- The company retains ownership of all currently possessed intellectual property
- The document is an agreement that the employee waives any rights to work created by him or her during employment with the company
- The employee agrees to not use any IP belonging to the company both during and after term of employment
- The employee also agrees to keep all information pertaining to the company confidential
- A definition of “confidential information”
You may also consider a non-solicitation or non-compete clause. However, the courts closely scrutinize these types of inclusions, so this is an area best discussed with your legal counsel.
Once you’ve drafted your employee agreement, consult with an experienced IP attorney to ensure the exact ownership over the various forms of intellectual property both already created and to be developed in the future has been established.
After finalizing these documents, make sure every current employee signs a copy of them plus all new hires and especially those in key positions.
Last, although it should go without saying, nothing is worse than not being able to find signed agreements when you need them most. Keep them in a designated location under lock and key.