Selena Kim

Written by: Selena Kim (Partner) & Daniel Derkach (Associate), Gowling WLG This is the third article in a three-part series. See:Part I to learn about the nature, identification and management of trade secrets; and Part II for guidance on the commercial handling of trade secrets.

For patented or patentable inventions, it is best practice to execute an agreement for a patent assignment that compensates the employee for the invention separately from their usual employment compensation. In case of inadequacies in the IP transfer provisions in the existing employment agreement, such a practice can provide the necessary basis and consideration to validate the transfer.

The success of IP transactions is rooted in the IP asset in play. But what if your company suddenly discovers it no longer actually owns the right, despite it being created by employees? As a patent practitioner, I spend a lot of time securing assignments from inventor employees on patent applications, so that their employers can apply for and own the resulting intellectual property.