Dealing with uncooperative ex-employee inventors just got a lot easier. Anyone who has had to track down a disgruntled former employee and persuade that person to cooperate in signing patent documents knows how difficult that can be. Even if the former employee can be found, he may simply refuse to cooperate. Under the old law the employer could file a patent application on an inventor’s behalf only under very limited circumstances, and needed to show evidence that the inventor refused to sign or could not be found after a “diligent effort.” This was often overly burdensome, and unnecessarily drove up the cost of patent prosecution.
The America Invents Act (AIA) addresses this problem by allowing employers to more easily apply for a patent on a former employee’s behalf. Under the new law, the employer only needs to show a “sufficient proprietary interest” rather than a “diligent effort.” A “sufficient proprietary interest” can be created simply by having all new employees sign an agreement creating a duty to assign to the company any patent rights and other IP rights accrued in the course of their employment. This should already be your standard practice; however, now would be a good time to review your employment agreement forms because the AIA makes them more valuable than ever.