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Licensing & Acquisition

IP Ownership/Licensing Clearance Review for Products or Services It can be important that a company owns or has a license to all IP used in a product or service of that company. Accordingly, all product designs should be audited early in the design cycle for IP ownership and/or licensing. This should be completed before detailed design […]

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IP Communication

The content of communications, especially written messages (email, regular mail, memos, internal notes, etc.), can be damaging if discovered during the course of litigation. The guidelines within this section provide suggestions to help ensure that the necessary patent-related communications are protected by attorney-client privilege and do not contain damaging characterizations, representations, and/or admissions.  

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Technology & Invention Documentation

An example of when it would be important to claim priority is when a company is disclosing a new technology development initiative, design, or innovation to an outside entity (such as customers, sub-contractors, development partners or collaborators), or when the invention is believed to be extraordinary. The documentation of a company’s innovations should be prepared before […]

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Agreements with Third Parties

Contractor IP Agreements Agreements with IP provisions can be used any time a contractor or outside party is engaged in a project where IP may be used or developed. An “IP Contractor”is any person or entity engaged by the company to assist in any way with the creation of IP. Such parties could include: Software […]

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Discharging Employees

Engaging/discharging an employee could include the following steps: Perform exit interview Identify any un-submitted or unfiled inventions Have employee return all IP materials and acknowledge their return and/or destruction as applicable Review employment agreements and applicable policy restrictions in the exit interview for the employee. Also send a termination letter with a reminder of the employee’s […]

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Employee Confidentiality Agreement

The following are general descriptions of terms that can be considered in standard employee agreements (to the extent permissible by local law): No Violations of Third Party Agreements. The employee should attest that the employee’s work for the company does not violate any non-compete or other contractual obligations to third parties.  This includes prior  employers and disclosure of […]

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