This may include trade secrets, confidential information, inventions and other innovations. Aggregating intellectual property ownership doesn’t happen automatically and requires meticulous planning with the help of qualified attorneys. Crowley Law LLC is ready to be your legal counselor as you seek to understand and secure intellectual property ownership.
Company founders often create intellectual property before incorporating or registering their business. These include patented and unpatented inventions and algorithms, as well as brand names, original works of authorship and logos that may be protected under copyright or trademark law. The ownership of such assets may become contentious if the founders elect to establish a business that is considered a separate legal entity, most commonly a corporation or a limited liability company.
In principle, any intellectual property (“IP”) created by founders prior to official company registration is owned by the founders. However, founders can sign assignment agreements to transfer ownership of the intellectual property to their company. If such a contract is absent or not adequately drafted, the founders may retain ownership of the intellectual property, even after leaving the business.
Ownership rights in IP created by an employee vary depending on the specific type of IP. Under U.S. Copyright law, the employer owns copyrights to all works created by employees, provided the works were developed in the course of the personnel’s employment. From a legal perspective, the phrase “in the course of employment” means that the creation of the works was part of the employee’s duties at the workplace and occurred during working hours.
Conversely, under U.S. patent law, the inventor of a patentable invention retains ownership rights unless he or she opts to assign the rights to the employer. To ensure your company obtains the rights to intellectual property in all works created by your employees, you should have them sign a written agreement that covers not only ownership of IP but also well-defined confidentiality obligations, prohibitions on the use of the IP and requirements to assist the company if required to perfect the company’s IP rights.
Unlike IP created by an employee, ownership of work created by consultants and other independent contractors can be complex. Independent contractors, whether they are companies or individuals, generally own the IP rights to all works they develop. The rights apply even if the works are created during their contractual engagement with your company. To ensure your company owns the intellectual property developed by your independent contractors, you need to have in place appropriate agreements to transfer ownership rights in the IP created to your company, as well as covering the confidentiality, non-use and assistance issues mentioned above for employees.
Crowley Law LLC recommends always having intellectual property assignment agreements for all founders, employees, consultants and other independent contractors. Failure to do so may leave your company vulnerable to the following situations:
Understanding who owns your intellectual property, such as trade secrets, inventions, works of authorship, trademarks and other IP, is only the first step toward building a competitive advantage. You must also transfer IP rights from founders, employees and independent contractors. Crowley Law LLC is ready to be your legal counselor as you seek to claim ownership of your IP and build your competitiveness. Some of our pertinent services include:
We can arrange for audits to identify a company’s IP assets, including patentable inventions, trademarks, copyrights, trade secrets and domain names and develop a strategy to manage and protect these assets. We also guide businesses in aligning IP management with their overall business strategies.
We have a network of IP lawyers who can assist in drafting, filing and prosecuting applications for patent protection. We also help register copyrights and brands with the appropriate trademark office and establish agreements and protocols to protect trade secrets and confidential business information.
We draft and negotiate employment contracts and assignment agreements to transfer IP ownership and rights from employees, founders and independent contractors. We also prepare licensing agreements allowing businesses to monetize their intellectual property.
Our network of experienced IP attorneys can help life sciences and other technology companies maintain intellectual property rights by tracking deadlines, paying required fees and managing portfolios. We can also help you monitor for potential infringements of your IP and take action to enforce rights through cease-and-desist letters, negotiation or litigation.
We represent businesses during litigation or dispute resolution concerning intellectual property.
We and our network of experienced IP attorneys can help a company ensure that its IP practices comply with local and foreign intellectual property laws.
IP can be protected by using established legal regimes. These include patents for inventions, secrecy and confidentiality for trade secrets, principles of copyright law for works of authorship and applicable trademark law for trademarks.
Yes, a logo can be considered an IP due to its symbolic significance to a company.
There are many things you cannot patent, including a mathematical formula, a law of nature, a scientific principle with no functional application or a naturally occurring substance. Also, you may not claim patent protection for an idea that is publicly known or disclosed publicly before you file a patent application. Consult Crowley Law LLC to determine whether your assets are protectable under some legal regime.
An Employment Agreement is a legally binding contract between an employer and an employee that outlines the terms and conditions of employment. This document establishes the rights and obligations of both parties and typically covers various aspects of the employment relationship. For example, it could expressly grant the employer ownership of any IP that the employee develops during the course of their employment.
No, employment agreements do not have to be in writing to be binding on many legal issues. However, we strongly recommend having written agreements to avoid misunderstandings and disputes.
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