A good way to test the adequacy of your current employee agreement is to consider how effective it will be if faced with these common problems.
What happens if your employee assigns an invention to someone else? An employee agreement should include both a current assignment of future inventions as well as a promise to assign future inventions. This way, if the assignment does not work, you can enforce the promise.
What happens if your employee is unable to (or refuses to) execute an assignment in the future? Often times, you can use the employee agreement, but it would be handy if the employee gave someone at the company a power of attorney to execute documents on behalf of the employee.
What happens if your employee is unable to (or refuses to) execute an patent declaration in the future? U.S. Patent laws now address for this contingency, allowing a co-inventor of the company to sign for the inventor, but it would be nice to have the inventor affirmation that the company may do so.
What happens if your employee leaves to compete with you, and attacks the validity of the patent he or she assigned to you? At least for now, the Doctrine of Assignor Estoppel prevents someone who assigns a patent from later challenging that patent, but Assignor Estoppel does not apply to validity challenges in the U.S. Patent and Trademark Office (e.g., ex parte reexamination, post grant reviews, and inter parte reviews.) An employee can agree to never challenge patents on the invention he or she assigns to the company.
What happens if your employee leaves with your confidential information (or that of your customers or suppliers)? Your employee agreement should require employees to maintain the confidentiality of your information, as well as that of your customers and suppliers. It should also give you the right to obtain an injunction to prevent disclosure and use of your information. Finally, to make sure that you have full access to all of the available statutory protections, your agreement should have a whistle blower exception so that you can take advantage of the Defend Trade Secrets Act.
What happens if your employee misuses your computer systems? There are federal statutes (the Computer Fraud and Abuse Act) and state statutes that protect computer systems from improper access and use. The problem is that employees are generally deemed to have authorization to access their employer’s computer system. An employee agreement can define an employee’s authorization to access the employer’s computer system, potentially facilitating action for misuse.