[Patentpractice] "advance" Inventor Declaration in Employment Contracts

Tue Dec 3 16:50:51 UTC 2024

Maybe put in the employment contract a monetary penalty, e.g., 1000 USD, if an inventor does not timely execute and return (e.g., within 2 weeks) declaration forms and other documents and information (per instance) for any invention the employee is obligated to assign to employer...

Then one can waive that clause in front of an inventor who refuses to sign... might be sufficient motivation.

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Subject: Re: [Patentpractice] "advance" Inventor Declaration in Employment Contracts
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RE: Declaration I'm not sure it would be helpful, since they can't declare that they invented something they didn't know yet they would invent? Substitute declaration practice is pretty straightforward if you have the assignment.

I like the idea of a short form. Curious to see what other people think about it.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Allen Richter (allenr--- via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
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Subject: [Patentpractice] "advance" Inventor Declaration in Employment Contracts

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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