Employee IP Rights and Employer Claims: Strategies for effective IP ownership and assignment

Tina A. Syring | Husch Blackwell LLP

A litigator who prioritizes understanding clients’ business culture, Tina defends clients in labor and employment cases and environmental toxic tort matters.

Tina began her legal career with a labor and employment lawsuit and quickly realized that she loved working in a practice area with such a strong human connection. She values the opportunity to work with companies in preparing best practices to create positive employee relations and, when needed, tackle difficult business decisions with employees in mind. Tina’s employment practice is heavily litigation focused, and she divides her time between emergency, bet-the-company cases and investigations that often involve white collar allegations, as well as employment litigation involving accusations of discrimination, retaliation, or harassment; wage and hour violations; and wrongful terminations. When litigation occurs, Tina also works with clients on implementing strategies to avoid similar situations in the future.

In addition to her labor and employment work, Tina has significant experience in toxic tort litigation involving major environmental exposures. These cases often find her in court. Tina thrives in the chess match and challenge of motion practice and trial, finding it immensely satisfying to make winning arguments in court. Earlier in her career, Tina was seconded as a company’s general counsel and human resources director, an experience that gave her an inside perspective on clients’ everyday world. By having this insight, Tina works with clients in a manner that meets their business culture, demands, and constraints, while also providing customized recommendations that are truly actionable for their companies. It is essential for outside counsel to understand a client’s organization and industry, and Tina heavily prioritizes this in her client relationships.

Nick Kuhlmann | Husch Blackwell LLP

Nick combines a technical background with extensive litigation experience to serve as a tenacious advocate in patent and trademark matters.

Nick represents clients of all sizes, from small businesses to multinational corporations, in patent and trademark litigation, anticounterfeiting, and trade secret matters. He has served as trial counsel on multiple cases through verdict or bench trial. While he has handled cases in a variety of industries, he is particularly experienced with clients whose businesses focus on the food and food systems spheres, including indoor farming and sustainable agriculture. In addition to his litigation work, Nick also advises clients on trademark portfolio management, trademark prosecution, and domain name enforcement, overseeing a global trademark portfolio for a Fortune 500 fertilizer company.

After beginning his career as an organic chemist for a multinational corporation, Nick earned his law degree and began practicing in IP law in 2004. His chief focus has always been IP litigation; however, he also has experience with patent prosecution and has drafted and prosecuted utility patents in the chemical, mechanical, and medical device fields. Nick has also represented clients in a variety of complex commercial litigation matters, such as insurance coverage, class action antitrust, and massive multidistrict litigation—experience that helps him spot potential legal problems beyond the IP arena.

Crafting compelling legal strategies from complex facts lies at the heart of Nick’s practice. He enjoys analyzing and building a case, he’s known for a flexibility that makes him an agile litigator, and he’s at his happiest when he’s getting results for clients. His broad background gives him a strong advantage here: Nick’s experience in patent prosecution means that he understands the finer details of patents and their histories, helping him develop pointed, persuasive arguments for a case.

Matthew Beyer | Husch Blackwell LLP

Matt resolves disputes and litigation for commercial clients in the cleanest way possible.

With extensive experience as a commercial and employment litigator, Matt thrives on advocating for clients. His practice includes high-stakes contractual and business disputes; defending and prosecuting employment claims for discrimination, wrongful termination, and wage and hour allegations; and litigating insurance coverage disputes and bad-faith claims. Matt works with a variety of clients concentrated in the technology, manufacturing, and transportation industries, including global corporations and Fortune 500 companies. Matt’s diverse practice has also included defending large product liability and toxic tort matters, including the defense of private military housing providers from claims of mold exposure in multidistrict and class action disputes.

Matt has tried cases to verdict, and he has argued and won appeals in both state and federal court. He understands the importance—and the art—of presenting a clear, coherent, fact-driven narrative that juries can readily grasp. However, his goal is always to pursue the outcome that’s best for the client, and often, that isn’t trial. Matt knows that in many disputes, drawn-out litigation isn’t beneficial to either party and can be an expensive distraction from business goals. Instead, he seeks the best, cleanest, least intrusive solution for the client, whether that’s arbitration, mediation, settlement, or, in some cases, a full trial.

Aggressive when necessary and conciliatory when not, Matt cares deeply about the client’s best interests. He’s known for his straightforward counsel, always ensuring that clients are fully informed from the outset on the realities of the litigation process. Clients value his open communication and his honest assessment of the risks and benefits of any strategy.

I. Foundations of Intellectual Property Ownership | 2:00pm – 2:15pm

• Intellectual property types: Patents, copyrights, trade secrets, and trademarks
• Legal principles governing IP ownership between employers and employees
• The significance of “work for hire” and “assignment of inventions” agreements

II. Employer Ownership of IP | 2:15pm – 2:30pm

• Understanding the conditions under which employers own IP created by employees
• The critical importance of written agreements and the risks of relying on assumptions

III. Employee Ownership of IP | 2:30pm – 2:45pm 

• Scenarios where employees retain ownership of IP developed during employment
• Analyzing employment contracts and their role in IP ownership
• Employee rights to inventions created outside of the employer’s scope or resources

IV. The Role of State Laws and Regulations | 2:45pm – 3:00pm

• How state laws affect IP ownership agreements and employee rights
• Key state-specific legal requirements for valid IP ownership agreements
• Navigating multi-state challenges in IP ownership

Break | 3:00pm – 3:10pm

V. Independent Contractors and IP Ownership | 3:10pm – 3:25pm

• Differentiating between employees and independent contractors in IP law
• The impact of contractor status on IP ownership and the importance of clear contracts
• Work-for-hire doctrine and its application to independent contractors

VI. Drafting and Enforcing IP Agreements | 3:25pm – 3:40pm

• Best practices for drafting clear and enforceable IP ownership agreements
• Consideration and timing: Ensuring agreements are legally binding and supported by adequate consideration
• Legal remedies for misappropriation and infringement of IP by employees or contractors

VII. Dispute Resolution and Litigation Strategies | 3:40pm – 3:55pm

• Common disputes over IP ownership and how to prevent them
• Strategies for resolving IP ownership disputes without litigation
• Key litigation considerations and case law updates

VIII. Practical Tips for Employers and Employees | 3:55pm – 4:10pm

• For employers: Steps to protect your company’s IP from the start of the employment relationship
• For employees: How to ensure your rights to inventions and ideas are protected
• Conducting effective IP audits and exit interviews to safeguard intellectual assets