Incredibly, many companies fail to place any assignment terms in their employment agreements. This is, of course, easy to avoid. Actual assignment agreements must have some degree of specificity. Details about an employee’s later invention cannot be known at the hiring date. Thus, employment agreements typically only create an obligation to later assign patent rights to the company.

Here’s a practice tip for new patent agents or attorneys when filing patent applications for a corporate client: always record an executed assignment agreement (from the employee-inventors to the company) when filing a patent application. PTO rules do not require this. But, if you follow this practice, your clients will avoid many patent ownership disputes with current and former employees.

Many companies also provide incentives for their employees to disclose innovations and cooperate with patent counsel in preparing, filing, and prosecuting patent applications on the company’s behalf. The incentives can include, e.g., special recognition and/or the payment of bonuses or profit sharing in the invention. By rewarding the employee (beyond just keeping his/her job), such practices may also decrease the incidence of ownership disputes.