Hiring can be painstaking, particularly when searching for employees with technical expertise. Seeking talented and hardworking employees is the primary goal, but a prospective employee’s intellectual property obligation to a previous employer must also be considered. Your candidate, let’s call her Tamara, may have all the requisite knowledge and skills for the job, but could her use of this knowledge violate IP-related agreements with her previous employer? Are you unsure whether Tamara’s IP obligations will hinder her performance, or worse, lead to liability? Here are five tips.
1. Understand the prospective employee’s rights (or lack thereof) to previously developed IP. While a previous employment agreement is a great place to start when determining a new hire’s ongoing obligations to a previous employer (see no. 5 below), some prospective new hires—particularly those with technical backgrounds—may have IP-related obligations to former employers in addition to their general employment agreements. In particular, Tamara may be a party to IP-related agreements such as non-disclosure agreements, joint-research agreements, licensing agreements or other IP policies that can hinder her ability to use or expand upon intellectual property she helped develop within the scope of her previous employment. Further, she may know her previous employer’s confidential business information and trade secrets (i.e., information from which the company derives some economic value due to its secrecy), which she should keep in confidence. As such, before hiring, the employer should review not only her previous employment agreement, but these IP agreements as well (if possible) to determine the employee’s continuing obligations.
