What happens to IP when an employee leaves

The paperwork question

Rights flow from inventors. An assignment of a patent or application must be in writing, and recorded to be effective as evidence of title. Many employment agreements contain only a promise to assign in future - which is a contractual obligation against a person who is about to stop taking your calls.

The time to obtain a confirmatory assignment is before the last day, while the relationship is still good.

The know-how question

If the valuable technology was never filed and is invisible in the product, what remains is confidence: a claim resting on contract and the equitable duty of confidence. That claim depends on evidence that the information was confidential, was communicated in confidence, and has been used.

Which in turn depends on whether you treated it as confidential in practice. A real exit process - project inventory, obligations reminder in writing, access revocation, and a record of what they worked on - is what makes that evidence exist.

What to actually do

• Obtain a confirmatory written assignment before the last day, and record it.
• Capture the technical record while they still have access to it.
• Confirm whether the claims of any pending application still name the right inventors.
• If something valuable was never filed, ask whether it is visible in the product - if it is, secrecy will not hold.