HUMAN RESOURCES
Keeping Valuable IP When a Key Employee Jumps To a Competitor By JEFFREY D. MORTON, APRIL M. WURSTER, BRANDON BUCK AND KEVIN M. BROWN
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hat steps can a general counsel take to ensure that valuable intellectual property stays with the company when a key employee departs for a competitor? This issue was recently dealt with in Bio-Rad Labs., Inc. v. ITC (Fed. Cir. 2021). The court ruled that the employee’s ideas did not turn into a patentable invention until after the employee left Bio-Rad. Since the
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Bio-Rad employment agreement had limited its assignment obligations to inventions conceived during the term of employment, the court ruled the inventions were not owned by Bio-Rad. The Bio-Rad decision suggests two steps that a general counsel can take to ensure valuable intellectual property isn’t transferred to an employee’s new employer: Convert the ideas into patentable
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inventions, and have a robust Confidential Information and Inventions Assignment Agreement (CIIAA). In Bio-Rad, the court refused to compel assignment to the former employer, in part because the “ideas” developed did not raise to the level of a “patentable conception” and were insufficient to trigger assignment. In practical terms, the distinction between BACK TO CONTENTS
