Invention Disclosure – Motivating Employees to Consider Intellectual Property Protection

By Jason R. Wachter

While design, development, testing and/or improvement of a product or system falls squarely within the job function of many employees, far too often companies miss out on the opportunity to protect potentially valuable intellectual property because employees are not focused on filing a patent application. Unless an individual has been exposed to intellectual property protection, why would they consider this to be of potential importance? After all, they completed their task at hand and are ready to move on to the next one.

While it can be an arduous task, if a company does not have an invention disclosure policy in place, it is important to develop one and to encourage all employees to disclose concepts developed during the course of their employment to the company’s legal department prior to implementing and/or making a public disclosure of the concept. All too often companies do not seek patent protection in advance of a public disclosure of a product, the product becomes a commercial success and then the company decides that they want to pursue patent protection for the product. The problem, in many instances, is that at this point it is too late to seek patent protection. In many countries patent protection must be sought prior to any public disclosure and in the United States a patent application must be filed within one year of public disclosure. A similar issue also arises when a concept is developed, a competitor through a public disclosure learns about the product and decides to pursue the same product.

So how does an employer get an employee to consider intellectual property protection? There are various ways in which a company can encourage employees to disclose their concepts that fall within the normal course of their employment prior to the concept being made public. One way employers may consider encouraging employees to disclose potential invention(s) to their employer is by creating a monetary incentive (e.g., a bonus). Alternatively, or in addition to a monetary incentive, employers may consider holding annual or even quarterly training sessions encouraging employees to reach out to the correct individual(s) at their company if they think they developed something that may be patentable. If a company wants to timely file for intellectual property protection, the onus is not only on an employee to disclose their potential invention to their employer, but for the employer to encourage the employee to do so.

Employers should develop either internally or with the help of outside counsel an invention disclosure form that can be readily available for employees to obtain, fill out and submit for review.

Patents can be an invaluable asset to a company’s success. We are available to assist and/or answer questions regarding this topic.