It is also an opportunity for employers to review their work practices and ensure that their intellectual property (IP) is protected. There are four principal IP rights; trademarks, designs, copyright and patents.
What can employers do?
Generally, under Irish employment law, IP created by employees is owned by the employer provided that it was created in the course of the employee's employment with the employer. Generally, under Irish employment law, IP created by an employee, other than in the course of employment, is owned by the employee. This presents challenges for employers and whether or not IP was created in the course of employment is often the subject of legal argument in the Courts.
Employers can implement a number of initiatives to protect their IP and mitigate potential legal disputes over the ownership of IP:
- Contract of Employment - At a minimum, we recommend the contract of employment specify that the employee acknowledges and agrees that all IP rights in any matter made or discovered by the employee during the course of employment (whether or not during office hours) affecting or relating in any way to the business, from time to time, of the employer be disclosed to the employer and belong to the employer. In addition, we recommend the contract of employment include contractual confidentiality obligations which would apply during employment and after termination.
- IP Assignment Agreement - We also recommend that the employee is required to sign and date an IP Assignment Agreement which applies at all times, both during the period of the employee’s employment with the employer and after the termination of employment. Any such agreement should set out what has been agreed between the parties in respect of proprietary and IP rights, including, the full and irrevocable assignment of IP rights to the employer. We recommend that the employee is also required, at the expense of the employer, to execute such documents as the employer may require to protect its IP rights.
- Non-Disclosure Agreement - Employers should also consider entering into a non-disclosure agreement with certain key employees to protect their know-how and IP when disclosing confidential information to the employee which again applies at all times, both during the period of the employee's employment with the employer and after the termination of employment. Any such agreement should set out what has been agreed between the parties in respect of the meaning of confidential information, confidentiality obligations, if and when disclosure is permitted, return of confidential information and reservation of rights to the employer.
It is important for employers to take all necessary steps to ensure that their IP is protected. IP is a business asset and should be treated as such.