My star inventor is leaving to work with a competitor. What can I do?

It’s the letter no employer wants to receive: a key employee resigning to move to a rival company. But it may not be as disastrous as you think. In the first instance we recommend quickly covering the following five points to protect your organisation’s intellectual property:

  1. Review your IP portfolio to check that no assignments or other documentation (for example declarations for USA) are outstanding from the inventor – it may be hard to get a signature from the inventor after they have left.
  2. Check that the employee understands the law, both on the ownership of intellectual property developed during the course of their employment, and the law in relation to confidential information. If they understand their obligations, they are less likely to breach them.
  3. Their contract of employment may put obligations on them about confidential information or there may be implied terms of confidentiality. Remind the employee what company information is confidential and should not be disclosed to their new employer.
  4. Get a patent filed covering what they have been working on up to now, even if this is at a relatively early stage. Pick their brains on what they have been doing, and cover as much of this ground as possible with the patent filing (or filings). If the inventor is uncooperative, then talk to colleagues that are familiar with their work.
  5. And finally, remember, there is no need for any of this to be confrontational – try to stay on amicable terms with the inventor if possible. You never know what the future may hold – the grass may not be greener after all.

If you would like to discuss this area further please get in touch with David Combes, or contact your usual attorney.