It is always a good idea to formally address patent issues in an employment agreement. This can be as simple as a letter countersigned by the employee. For more complex employment arrangements, a more detailed employment agreement may be warranted. If you are not sure, ask us and we can determine what type of agreement you need.
Many disputes arise on who owns patent rights when an employee invents something patentable during business hours. Different flavors of dispute occur when an employee works on a seemingly non-related project after normal employment hours, but uses some of the employer's resources. Without an agreement, the general rule is that an independent contractor is not under a duty to assign. A full time employee has a different analysis.
Things can get complicated when business arrangements go sour. A simple employment agreement should provide clarity, and may potentially avoid a costly dispute. In the interference proceeding that we recently won, a simple employment agreement, or contractor agreement, would have avoided the entire situation. Both parties thought that they should have the patent rights. The Patent Office does have procedures for resolving such disputes, but they are almost always expensive.
If you would like us to analyze your particular situation, call us to set up an appointment to discuss starting an engagement. Please do not send confidential information prior to negotiating an engagement.