Protect Your IP: Three Important Agreements for Founders and Executives. By Tom Cockriel, Trenam Law Attorney
As you grow your business, develop your intellectual property, and fine-tune your processes, it will be very important that you protect your confidential information and intellectual property. Most people know that obtaining patents, trademarks, and copyright registrations are common ways to protect intellectual property, but the agreements that you implement with your employees and third parties can often be even more important in protecting your confidential information and intellectual property. This post focuses on three often-overlooked agreements that you should use to your advantage.
Non-Disclosure Agreements. You should consider utilizing a non-disclosure agreement for any individual or entity that will access your confidential information, including potential business partners, investors, and customers. The non-disclosure agreement should include a broad definition of confidential information, including customer lists and supplier lists, and any other confidential information being shared with that party. The duration of the confidentiality obligations may be different on a case-by-case basis but the duration should be adequate to protect your information, which might be perpetual with respect to information that could be your trade secrets. There are specific provisions that may need to be included in your non-disclosure agreement based on jurisdictional considerations.
Employee Confidentiality and Invention Assignment Agreements. As the names suggest, these agreements bind your employees to confidentiality obligations and assign inventions from the employee to your company. Companies often mistakenly rely solely on the work made for hire doctrine for ownership of the company’s intellectual property but the statutory work made for hire regime may not always cover the full scope of each invention made by an employee, including patents and patent applications. The scope and content of these agreements will need to be tailored to each situation based on factors such as employee location, employee role, and your industry.
Contractor Agreements. Similar to employees, you should ensure that your contractors, consultants, and other third party providers are subject to confidentiality obligations and that they assign the intellectual property rights they develop for your company to your company. The work made for hire doctrine is even narrower for non-employees. In most cases, in the absence of a written agreement, the contractor owns all intellectual property they create regardless of whether you pay them to create it. Among other provisions, you should ensure that the agreement includes a present tense assignment (i.e., “I hereby assign”) of all intellectual property created by the contractor and not just an obligation to assign (i.e., “I agree to assign”) the intellectual property to your company. If there are specific deliverables that your company should own, consider specifying those items in the agreement.
Of course, there are other provisions in the above agreements that you (and your attorney) should review so that you understand your company’s rights and obligations.
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