Copyright (c) 2006 Journal of Intellectual Property Law Association
Journal of Intellectual Property Law
ARTICLE: EMPLOYMENT AGREEMENTS FOR THE INVENTING WORKER: A PROPOSAL FOR REFORMING TRAILER CLAUSE ENFORCEABILITY GUIDELINES
13 J. Intell. Prop. L. 279
Over the course of the twentieth century, employment contracts have evolved to compensate for the shortcomings of common law. At common law, employers have no ownership right to their employees' post-termination inventions. However, employment contracts can supersede the common law, and most employers have taken advantage of this mechanism to secure their commercial interests.
Through experience, employers have become savvy enough to insist that all employees assign their inventions made during employment and inventions made post- termination, when reasonable. Yet, with the emergence of such comprehensive covenants, the courts have grappled with the question of how to gauge their enforceability. Should an assignment of future inventions be treated like any other restrictive covenant? Although the methodology for assessing the enforceability of non-competition agreements is well established, is this methodology easily transferable to inventive subject matter which, admittedly, is characterized by different attributes? All of these questions will be addressed in this commentary.
In the case law, the prevailing trend has been to apply non-competition principles to invention-assignment trailer clauses. As argued here, this approach is misguided because the variables on which non-competition analysis depends were not designed to protect the interests associated with inventive subject matter. For this reason, a new test is proposed which is adapted to the interests at stake in invention assignment clauses, both to employers and employees.
Along with this proposal, it will be argued that nondisclosure-confidentiality clauses are more closely related to invention covenants ...
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