Intellectual Property in the Employment Relationship

November 24, 2015

4541Human capital and intellectual property are two of the cornerstones for the success of a company and it is important for companies to understand the role of intellectual property in the employment relationship.  Companies should take a number of steps to define the respective rights and obligations of the company and its employees as to intellectual property which may be developed and/or used in course of the company’s business: making sure employees are aware of their obligations to assist the company in protecting certain information as a trade secret; ensuring that hiring of new employees does not create problems as to the use of trade secrets of their former employers; perfecting ownership rights in innovations created by its employees; restricting employees from engaging in activities during and after the term of employment which might result in the use or disclosure of the company’s trade secrets and other confidential information; and establishing procedures for ensuring that employees understand that their obligations extend beyond their term of employment (e.g., exit interviews and post-employment Gutterman WLEC bannernotices to employees and new employers).

This month’s update to Business Transactions Solutions includes a new chapter on Intellectual Property in the Employment Relationship (§§ 203:1 et seq.) which discusses the use and contents of various employment-related agreements relating to intellectual property include employee confidentiality agreements, confidentiality and innovations assignment agreements and agreements restricting competitive activities of employees.  The chapter also covers common law duties of employees to protect confidential information and trade secrets and common laws regarding the enforcement of restrictive covenants.  The materials include a Master Form and Clauses Library for an employee confidentiality and innovations assignment agreement.  The specialty forms library includes an proprietary information and inventions agreement, an employee statement, an employee exit interview worksheet, a termination certificate and a letter to a terminated employee.  The information, agreements and other practice tools in the chapter can help business counselors in providing their clients with valuable input to their overall technology management program.

Titles by Alan Gutterman