Protect Your Intellectual Property: Use Care With Consultants

Unless your consulting agreements explicitly require your consultants to assign their inventions to you, they have no obligation to do so, and your competitors could end up owning your intellectual property.

Dr. Imants Lauks was employed by a company called i-STAT, where his employment agreement required confidentiality and also specifically required him to assign all of his inventions to i- STAT. When Dr. Lauks resigned from i-STAT and agreed to continue as a consultant, he signed a consultancy agreement that stated the confidentiality provisions from his previous employment agreement continued; however, it did not specifically mention assignment of inventions. While a consultant, Dr. Lauks made and patented inventions, which he assigned to i-STAT’s competitor Epocal. Abbot then acquired i-STAT, sued Epocal for infringing Dr. Lauks’ patents, and lost because it could not show that it owned those patents.

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