Do You Own the IP You Paid For?

16.05.2017

By Lawrence Hoffman

The Start of Something New:

You have an idea for a product or a service that you want to commercialize. You may be a startup or even an existing business with a potential new product. There’s a good chance that there will be an invention or other in intellectual property (IP) that needs to be protected. Perhaps you are an attorney  who has a client with this issue.

As an entrepreneur, even if you work alone at first, if all goes well, you will soon have others working with and/or for you. There’s a good chance that they, or they together with you will create additional IP.

You paid for it, but who owns that IP? If you or your client are not really careful, there may be nasty surprises down the road.

Why You Should Read On:

There are potential wrong turns on the way to IP ownership peace of mind. To help you find your way, we have prepared a five-part series of articles (Links to each part appear below.)

In Part I we discuss laws in various places that deal with ownership of employee inventions and other IP. We consider the law in the absence of an employment agreement as well as laws that limit an employer’s right to ownership of IP created by employees. Part I may be found here.

Part II (http://www.ipatent.co.il/ownership-of-ip-created-by-employees-and-collaborating-or-commissioned-third-parties-2/) will describe the kinds of provisions that can and should go, in an employment agreement. However, the law and practice concerning compensation for IP created by employees, protection of Trade Secrets during and post-employment, and the use of non-competition provisions in employments agreements are topics in themselves. We cover these in Parts III (http://www.ipatent.co.il/ownership-of-ip-created-by-employees-and-collaborating-or-commissioned-third-parties-3/), IV (http://www.ipatent.co.il/ownership-of-ip-created-by-employees-and-collaborating-or-commissioned-third-parties-4/), and V (http://www.ipatent.co.il/ownership-of-ip-created-by-employees-and-collaborating-or-commissioned-third-parties-5/).

Finally, in Part VI , we cover ownership of IP created by third parties either under a commissioning contract or jointly with your employees under a collaboration agreement.

About the author: Larry Hoffman has a B.S in Electrical Engineering and Comp. Sci. from the Mass. Inst. of Technology and a J.D. from the George Washington University School of Law. He has been a lawyer since 1965 specializing in IP law and product liability defense. He is registered to practice before the U.S. PTO, the U.S. Court of Appeals for the Federal Circuit and the state and federal courts in New York, Maryland, and the District of Columbia. His work includes preparation and prosecution of patents in countries throughout the world, and counseling on IP and product safety matters. He has been involved in the trial of close to 100 lawsuits of various kinds. You can reach him at Lawrence@ipatent.co.il.

 

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