Dai Yoshida / November, 2018
How do I include the work of my employees in the company’s IP protection?
Dai Yoshida is the Founder and Attorney of BlackBelt Legal. After corporate gigs at GE, Blackrock, Sony and a big law firm, Dai Yoshida started his own legal practice. In this video, Dai explains how to protect the IP that employees create on the job.
How do I make sure the work of my employees is included in the company’s IP protection?
When you hire somebody, as part of the employment agreement you have to ask them to give up the ownership of the IP that he or she develops on the job. Failure to do that could create a ground for the party to say that the particular IP which happens to be a very important component to your service or product is all of a sudden, their own property and therefore please pay a license. In order to avoid this kind of litigation later on. It is very important to spend some time, money and resources at the very beginning when you hire somebody to make sure that the company IP is protected, even from its own employees.
On the job, the definition is while they are employed on their promise using the company property. These are kind of one guideline. There are always questions to as what happens when they are at home, however, using the company computer or speaking to their colleagues developing their idea while they are away from the office. This can create a bit of ambiguity.
Nonetheless, the company should have a very clear policy where there is no expectation privacy exist when they are on the job using the company property such as a computer.
It is very important for the company to have a policy in which employees signs to specify that any intellectual property developed while they are on the job or using the company properties belongs to the company. If there is some ambiguity to it they can raise it right away to the company to negotiate.