Previously in our Intellectual Property (IP) Best Practices series, we introduced step six to managing your IP: well-drafted agreements. Please check back every Monday for the next step in this series.
Intellectual property (IP) is continuously created in all innovative companies so if a proper discovery and disclosure protocol is not in place, employees may disclose IP by mistake. It is important to establish a process by which discovery becomes a regular affair. One of the best way for a business to ensure compliance is to provide incentives for employees to come forth proactively.
Include an overview of the discovery and disclosure protocol in the code of conduct explaining things with examples; a limited understanding of what constitutes IP may leave a lot of essential IP hidden. But your most important duty is to add a discovery and disclosure clause in the employment agreement. A disclosure clause may look something like this:
“The employee must disclose to X Startup all discoveries, inventions, and creations made during the course of his employment. The duty to disclose arises when the employee has reason to believe that the discovery or product consist of intellectual property. The employee shall make declarations, assignments, or provide other documents as may be necessary in the course of registration to ensure that title to such intellectual property shall be held by X Startup.â€
Many employers make the mistake of assuming that all intellectual property created by employees belong to them; although this may be the default in case someone is hired to ‘invent’, it is not so when someone creates copyrightable material like photographs or software code. Just to be sure you have covered your bases, it is always advisable to have an assignment of IP clause in the employment agreement. For example, if an employee is hired to invent engines and produces one outside of work then the employer owns all IP created in the course of his employment. But if the employee invents a talking robot in his spare time, unless an assignment of invention clause is part of the employee agreement, the employee owns the IP created. This is a drastic example but the line between what constitutes a business and what falls outside its ambit can be blurred at times.
Building employee loyalty and rewarding them for creation of new IP is a way to encourage disclosure. But unless you have a process in place to monitor this IP, you will be missing out on IP identification as well as various opportunities to leverage that IP.
When in doubt, have employees use Traklight’s ID your IP software, as additional reports do not cost extra, and may reveal IP that neither you nor the employee knew existed.
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