Non-Compete, Non-Solicitation and Invention Assignment Agreements

One way companies can protect intellectual property is through agreements with employees or independent contractors which are designed to protect and keep the company's existing and future intellectual property within the company. Examples of such agreements are non-compete agreements, non-solicitation agreements and assignments of inventions.

The attorneys at Houston Harbaugh, P.C., have experience advising businesses regarding agreements with employees and independent contractors designed to protect a company's intellectual property. This experience includes reviewing, drafting and litigating such agreements for companies. Thus, we can advise businesses preparing and negotiating these agreements. We can also advise businesses as to the enforceability of existing agreements and we can represent businesses in lawsuits involving these agreements.

What is a non-compete agreement?

A non-compete agreement is one in which an employer requires an applicant or employee to sign an agreement not to work for a competitor and not to form a competing business during the term of employment and for a period of time afterwards. Companies may ask an independent contractor to sign a non-compete as well.

What is a non-solicitation agreement?

A non-solicitation agreement provides that an individual may not solicit the employer's customers or employees if the individual starts a competing business or works for another employer.

What are invention assignment provisions?

An employer may protect inventions created by its employees or independent contractors through express assignment agreements which assigns ownership of inventions (and related intellectual property) to the company.

Enforceability of an employment contract

The enforceability of "restrictive covenants" such as non-competes and non-solicitation agreements depend upon state law and depend upon the reasonableness of the terms of the non-compete and non-solicitation agreements.

Whether a non-compete or non-solicitation agreement is reasonable depends upon the facts of the case, including the extent of the geographic area involved, the duration of the agreement and the scope of the work involved.

Pennsylvania law also requires that employees receive something in return for agreeing not to compete, whether it is employment itself when hired or something additional, after the employee's service has already begun.

Ownership of Inventions

Agreements to assign the ownership of an invention to an employer are presumed where a person is hired for the purpose of using his or her inventive ability to solve a specific problem or to design a certain procedure or device for the employer. In such a case the invention is the precise subject of the employment contract.

However, where an employee invents something that he or she was not specifically hired to create, the presumption will not apply and a business will need an agreement in writing to be protected. Thus, the best way to protect a company's ownership interest in an invention is to assign ownership in writing.

Talk To Us About Using Employment Agreements To Protect Your Intellectual Property

Our intellectual property lawyers are well-versed in drafting, reviewing and challenging restrictive covenants in employment agreements. We provide practical solutions for businesses who need to protect patents, trade secrets and other intellectual property. We can help clients navigate intellectual property issues by providing them with the knowledge and information needed to make informed decisions. For more information, call 412-281-5060 or send our intellectual property attorneys an e-mail by completing the contact form on this website.

  • Representation of battery testing manufacturer in litigation and on appeal.
  • Representation of a commercial lighting manufacturer in litigating patent infringement claims.
  • Representation of medical and pharmaceutical products manufacturers in patent , unfair competition and false advertising matters.
  • The representation of a metals manufacturer in a trademark dispute.
  • Advising a small business client regarding copyright and trademark rights and defending his business against attempts to invalidate those rights.
  • Defending a natural gas exploration company against a patent invalidation lawsuit and prosecuting a counterclaim for patent infringement.
  • The representation of minority members of a green technology limited liability company in a shareholders' derivative action against the majority member for violations of RICO, fraud, and breach of fiduciary duty.
  • The representation of a Fortune 500 telecommunications company against a foreign manufacturer for misappropriation of trade secrets and breach of contract.
  • Representation of a telecommunications company in federal litigation brought under Federal Trademark Dilution Act and Digital Millennium Copyright Act by a designer and manufacturer of networked communications systems and related software.
  • Representation of a Dutch corporation which owned the exclusive rights and license to the "total image" of one of the world's foremost tennis superstars in action against defendant corporation for breach of endorsement contracts.
  • Advising a franchise business regarding the need for specialty intellectual property insurance coverage and reviewing several competing proposed insurance policies.
  • Providing opinions and opinion letters to individuals and companies on patent and trademark rights, risks and liabilities.
  • Representing employers and employees in disputes over intellectual property licensing, royalties and ownership.
  • Defending Fortune 500 and mid-sized companies against claims of patent infringement.