Consultants and their rights to IP

Absent any agreements to the contrary, consultants typically have the rights to any intellectual property that they develop. At the very least, a company should ensure that all of their employees sign assignment of inventions agreements at the beginning of employment and that all consultants sign consulting agreements when they are first retained. These agreements should make clear what work performed within the scope of employment and/or derived from the company’s proprietary information belongs to the company. Similar provisions can also be included in non-disclosure agreements or confidentiality agreements that are provided in addition to an employment or consulting agreement. These provisions should address all inventions, invention disclosure forms, copyrightable materials, etc., not just materials that are covered in patent applications. [Cross-reference to forms]

In addition, the company should obtain assignment forms from all inventors (employees and consultants) when filing any sort of patent application (provisional, utility or foreign). Specifically, the company should ensure that all named inventors on the patent application sign assignment forms that assign their rights in the patent application to the company. These assignment forms should then be recorded with the United States Patent and Trademark Office at the time the patent application is filed.