S1 E27 Securing IP Ownership When Working with Partners, Employees, and Contractors with Wayne Carroll and Ike Devji

S13 E27 Securing IP Ownership When Working with Partners, Employees, and Contractors.

Do you own a socket wrench? I have done many projects with a socket wrench. One of the innovations was invented in 1965 when a Sears clerk invented a socket wrench with a button that releases the socket so you can change sockets with one hand. Sears agreed to buy the patent rights from their employee for $10,000 and then went on to sell millions of socket wrenches with the button release feature. When the inventor saw how widely the patent was sold, he sued Sears saying they misrepresented the value of the patent when they bought the patent. The lawsuit lasted for 20 years, from 1969 to 1989 when the case finally settled for an undisclosed amount.

Clear agreements around intellectual property can prevent millions of dollars in lawsuit costs, and even save projects that otherwise might be abandoned because of the risks around IP ownership.

Intellectual property has defaults for ownership.

Default for Trade Secrets (Confidential Information): A trade secret is only enforceable if there is an agreement to keep it secret or a breach of reasonable security to keep it secret. If you don’t take steps to keep it confidential, you will not have any IP rights.

Default for Patents: Patents are owned by the inventors unless the inventor was an employee (not a contractor) working within the scope of their employment.

Default for Copyright (Creative Works): The author is the owner unless the creative work was created within the scope of an employee’s (not a contractor's) employment.

This gets messy when two companies work together and create new IP if there is not a clear agreement on who will own the IP.

ChatGPT will use your confidential information if you give it access. Some companies are finding their confidential software and other IP in ChatGPT and other AI output.

What you need to do:

Create an agreement with all employees, contractors about ownership of IP, and use of confidential information. Negotiate clear expectations when doing a joint research project and be careful not to give away trade secrets in the process. Don’t be greedy (Pigs get fat, hogs get slaughtered) - deal fairly with employees and contractors.

TAKE ACTION Schedule a free consultation to discuss your IP agreements and plans.

Our next episode covers The Role of Contracts in IP Ownership: Navigating Joint Ownership, Licensing, and Assignments to Protect Your Interests

BIO: Wayne Carroll is a highly experienced intellectual property lawyer with over 15 years of experience. He holds a Juris Doctor degree with a concentration in Intellectual Property Law from Suffolk University Law School, as well as an undergraduate degree in Electronic Engineering Technology from DeVry University. Wayne is the CEO and Attorney at Inspired Idea Solutions, LLC, a firm he founded in 2013, where he specializes in patent strategy, patent prosecution, trademark strategy and registration, and copyright litigation.

In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or [email protected]. You can also connect with Wayne on LinkedIn.

Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.