[Patentpractice] "advance" Inventor Declaration in Employment Contracts

Pamela Brisky (Fujitsu) pbrisky at fujitsu.com
Tue Dec 3 16:28:25 UTC 2024


Hi –

Adding a second question as to whether a “fit for recordation” short form would be beneficial since the substitute statement is easy enough to obtain but recording some sort of obligation to assign, isn’t (we don’t know recording employment agreements – even highy redacted ones).



Pamela Cei Brisky
Senior Patent Paralegal
Fujitsu Intellectual Property Center
Fujitsu North America, Inc.
(571) 216-2112
pbrisky at fujitsu.com<mailto:pbrisky at fujitsu.com>


[Japanese Pagoda overlooking Mount Fuji in the background, during autumn season. Text in the box says: Embrace the season of transformation]




From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Allen Richter (allenr--- via Patentpractice
Sent: Tuesday, December 3, 2024 11:17 AM
To: Robert Sayre via Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Allen Richter (allenr at richterpatent.com) <allenr at richterpatent.com>
Subject: [Patentpractice] "advance" Inventor Declaration in Employment Contracts
Sensitivity: Confidential

Dear all,

Employees sometimes refuse to sign assignments, in which case an employment contract stating that all future inventions are hereby assigned to the employer, may be of help.

In rare cases inventors refuse to sign inventor declarations. Would it make sense/ eventually be helpful to have “advance Inventor Declaration” clause in an employment contract?

Allen

European, Swiss & Israeli Patent Attorney
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