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Assignment of Inventions Contracts

An invention assignment contract is an contract signed by an employee or consultant of a company upon hiring that requires the employee or consultant to disclose all innovations made, conceived, developed, or reduced to practice during his or her employment or engagement with the company and to assign all right, title, and interest in all such innovations, including rights in any patents, copyrights, trade secrets, rights of priority, and other proprietary rights, to the company.  An invention assignment contract also typically requires employees and consultants to assist and cooperate with the company to execute and enforce all documentation necessitated by the assignment or required by a government agency during the registering of intellectual property.  Furthermore, such contracts should require the employee or consultant to list any preexisting innovations that should be excluded from the assignment so that any new innovations are more clearly identifiable.

The consequences of failing properly draft an assignment contract may be harsh.  If an employee breaches his or her invention assignment contract, the employer's only recourse may be a breach of contract action.  Because it is typically the case that the employee assigns the invention to a company he or she founds or sells it to a bona fide purchaser for value, such a breach of contract action may provide cold comfort.  If a company wants to rely on that employer's invention assignment contract as a defense, the contract may not provide the coverage a client needs.

Ownership of intellectual property - patents in particular - is critical both in the business world and in court.  Businesses routinely rely on assignment of invention contracts to determine the allocation of invention rights.  Such contracts are critical because employment alone does not oblige an inventor to assign a patent to his or her employer. Not all assignment of invention contracts are created equal, however.  Will the assignment of invention contract on which a company might rely for its litigation defense survive the rigors of litigation and emerge battle-tested, or will it not be worth the paper on which it was written?

A niche status and use of technology enable us to provide high quality, cost effective solutions to  a broad range of clients. We understand the dynamics and requirements of technology business environment. We have  the ability to see across different areas of law from both a legal and technically astute viewpoint. Some of our clients are surprised that we know how their business and technology work without having to be informed of the detail. We use our skills and experience to judge the balance between legal and commercial risk and deliver our services promptly and economically. We recognize that the value of our services is measured by the value we add to the business of our clients. We approach clients' needs and provide support in a timely, efficient, and effective manner and share with clients the legal and business experience in the process of assessing developing and deploying legal and business strategies.

Pinsky Law can provide a full spectrum of commercial contracts services to our clients with focuses on corporate, intellectual property and technology law and has experience in drafting contracts for protection and exploitation of intellectual property.  We can represent clients of all types (from middle market to start-ups in high tech, financial, entertainment, publishing, marketing and other industries) on business and marketing issues and strategies (including risk management), the protection and exploitation of creative and technological works (including trademarks, copyrights and patents), litigation management, and other intellectual property.