« Staff transfer agreements are one of the most common agreements made by companies. Despite their proliferation, there are a remarkable number of pitfalls that can appear in agreements when a company has to rely on them. Are there only a few examples: is there indeed an allocation agreement that he much needs; potentially contains critical language that has been blessed by the courts; It continues to protect a company`s current needs in the event of a sale of the business or a change in its operational structure; and does it address the legal uncertainties associated with the transfer of unpatented trade secrets? These examples of possible pitfalls are highlighted in this article. They stress the need to regularly review staff files to ensure that executed invention agreements exist and are easy to find, and that agreements continue to create rights and obligations that are necessary to protect the current situation and needs of the company. Employee Invention Assignment Agreements: Issues in Getting Them Right, David Brody, Hamilton, Brook, Smith – Reynolds, PC, Concord, MA, June 2011. « This language transfers the title within the meaning of the law, without the need to give in at a later date, at the time of invention and patent application. According to the FilmTec rule, an after-the-fact assignment of the invention, as is normally the case for patent tracking, is invalid if the transfer of future rights is present. Invention Assignment Following Stanford v. Roche: Implications for Technology Transfer and Government Contracts, Cain, Gervase, Johnson, Liberto, Tuchin, Mintz Levin, June 27, 2011. Employees generally see these provisions in a Confidential Information and Invention Agreement (CIIAA), which is separate from their letter of offer or employment contract.
Independent contractors generally see these provisions in their independent contracting agreement. Founders generally see these provisions both in an initial intellectual property transfer agreement reached at the time of the creation of their business, but also in an ICIAA or an independent contractor agreement concluded as part of their ongoing service relationship.