Question: Disclosing inventions in employment contract


I was offered a job in which I need to disclose all pre-existing inventions and assign all future inventions that were not disclosed to them.


I am an inventor and the job is basically an inventor-in-residence position. Do you have any tips for making the disclosures? Not everything is patented but there are a number of my ideas I want to protect which others are working on developing. Can I simply describe each in a paragraph or two and will that suffice?

Answer: Disclosing pre-existing inventions will keep separate inventions you own and inventions your new employer will own.


Therefore, you should be as complete as possible in disclosing your pre-existing inventions, but not to the extent of disclosing the invention itself. For example, if you invented a new engine with a special piston, you could identify your invention as an engine with a special piston, but not disclose the aspects which make the piston unique.


It does not matter whether your pre-existing inventions are patented or not for purposes of this disclosure.