Employee Invention Checklist: Agreement Scope and Statutory Carve-Outs, Disclosure and Review Process, Ownership Confirmation Records, Compensation and Award Terms, and Departure Handling

By Casey Scott McKay · 2025-05-09

A ten-phase working checklist for the employee invention programme, covering the documents that must exist before anybody asks for them. Phases one and two cover the agreement language and the jurisdiction-specific carve-outs and notices. Phase three covers the population beyond employees — contractors, interns, advisors, academics, and founders. Phases four and five cover the disclosure form, the review committee, and the inventorship determination. Phase six covers the award scheme and the foreign statutory regimes it has to satisfy. Phases seven and eight cover confirmatory assignments, recordation, and onboarding. Phases nine and ten cover departure handling and remediation of an existing chain of title. Each phase ends with a gate.

IP and Technology > Patent Counseling Transactions | Checklist | Published 9 May 2025 - Updated 4 June 2025 | Casey Scott McKay - marksy.us

How to use this checklist

The question this checklist answers is not "does the company have an invention assignment agreement" — almost every company does — but "can the company prove, for any given patent, that it owns it".

That proof is a chain: the right person signed the right document, in the right version, with the right jurisdictional schedule, before the invention was made, followed by a confirmatory assignment naming the application, recorded at the relevant offices, with the disclosure and inventorship record to support it.

Ten phases, each ending with a gate. Run them in order to build a programme; run any one as a diagnostic on an existing one.

Use alongside Building an Invention Assignment and Reward Programme and Who Owns What Your Engineer Thought Of. Templates sit in the Employee Invention and Inventor Compensation Toolkit.

Phase 1 — Agreement scope and language

The transfer

[ ] Confirm the agreement uses present assignment language — "hereby irrevocably assigns" — rather than a promise to assign, per FilmTec Corp. v. Allied-Signal Inc. and Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc..
[ ] Confirm the subject matter reaches inventions, discoveries, improvements, developments, designs, works of authorship, mask works, know-how, data, and trade secrets, whether or not patentable or registrable.
[ ] Confirm a separate copyright assignment sits alongside any work-made-for-hire characterisation, since 17 U.S.C. § 101 covers only enumerated commissioned categories and Community for Creative Non-Violence v. Reid governs the employee question.
[ ] Confirm the writing requirement of 17 U.S.C. § 204 is satisfied by signature.
[ ] Confirm a moral rights waiver, with consent as fallback, extends to the fullest extent permitted.
[ ] Confirm the temporal scope covers the whole engagement, including any period before formal start.

Supporting obligations

[ ] Confirm a further-assurances clause requires execution of documents, cooperation in prosecution, and testimony.
[ ] Confirm a power of attorney permits the company to execute where the individual will not, with 35 U.S.C. § 118 as the statutory backstop.
[ ] Confirm a disclosure obligation states what, to whom, in what form, and by when.
[ ] Confirm confidentiality obligations cover both company information and third-party information held under obligation.
[ ] Confirm a return-of-materials obligation operative on termination.
[ ] Confirm the agreement is assignable and follows a corporate reorganisation.
[ ] Confirm the counterparty entity still exists and is the entity that employs the person.

Holdover clause

[ ] Confirm the duration is defensible — six to twelve months rather than two years or more.
[ ] Confirm the subject matter is limited to the field the employee actually worked in.
[ ] Confirm a nexus requirement ties it to the employee's work or the company's confidential information.
[ ] Confirm the clause is severable so an over-broad element does not take the enforceable core with it.
[ ] Assess it against the local restraint-of-trade position, noting the strict end of the spectrum in Edwards v. Arthur Andersen LLP.

Readability

[ ] Confirm the agreement is short enough that a person might read it.
[ ] Confirm the prior inventions schedule is a visible page rather than a buried appendix.

Gate 1. The template transfers title on creation, covers all subject matter, supports itself with disclosure and further-assurances obligations, and carries a holdover clause drafted to survive scrutiny.

Phase 2 — Statutory carve-outs and notices

[ ] Identify every state and country in which any person subject to the agreement performs work.
[ ] For each US state, identify whether an invention assignment statute applies.
[ ] Draft a jurisdiction appendix for each, reflecting that state's carve-out language.
[ ] Confirm the California appendix reflects Labor Code section 2870 accurately, including the exception for inventions relating to the employer's business or resulting from work performed.
[ ] Confirm the written notice required by California Labor Code section 2872 is given at the time the agreement is made, and record that it was.
[ ] Confirm equivalent notice requirements in other states are met.
[ ] Confirm the human resources system holds a current work location field capable of driving appendix selection.
[ ] Confirm remote employees receive the appendix for their actual work location, not the headquarters state.
[ ] Confirm a relocation triggers re-application of the correct appendix.
[ ] Record, in each personnel file, which appendix was applied and when.
[ ] Confirm non-US employees are on a locally drafted instrument rather than a US template with an appendix.
[ ] Confirm works council or employee representative consultation requirements have been satisfied where applicable.
[ ] Test by sample: pull twenty files at random and confirm the correct appendix was applied.

Gate 2. Every jurisdiction is identified, the correct appendix is applied by actual work location, statutory notices are given and recorded, and a sample test confirms the process works in practice.

Phase 3 — Population coverage

[ ] Build a coverage register listing every category of person who might contribute to an invention.
[ ] For each category, record the instrument that covers them and the person responsible for applying it.

Employees

[ ] Confirm execution before the first day, as a condition of employment.
[ ] Confirm storage in a retrievable system rather than a shared drive folder.
[ ] Confirm the executed version is identifiable, since template versions change.

Contractors and consultants

[ ] Confirm every engagement carries a present assignment of inventions.
[ ] Confirm a copyright assignment sits alongside any work-for-hire recital.
[ ] Confirm a moral rights waiver and further-assurances clause.
[ ] Confirm no engagement relies on a purchase order with no intellectual property terms.

Flow-down

[ ] Require identification of subcontractors before engagement.
[ ] Require equivalent assignment terms down the chain.
[ ] Require evidence of executed subcontractor terms on request.
[ ] Audit at least one agency relationship per year against this requirement, per the Agency Engagement Checklist.

Other populations

[ ] Interns, apprentices, and visiting researchers brought within the programme.
[ ] Advisors and board members covered where they contribute technically.
[ ] Academic collaborators addressed with the institution, since institutional policy usually assigns to the university — see From Laboratory to Licence.
[ ] Founders covered by a confirmatory assignment at incorporation listing pre-incorporation work by name.
[ ] Acquired teams diligenced and remediated within the first year.
[ ] Seconded employees addressed in the secondment documentation.
[ ] Government-funded work handled under the subject invention regime, per the Federal Contract IP Checklist.
[ ] Joint development partners contracted out of the 35 U.S.C. § 262 default, per Whose Invention Is It?.
[ ] Non-inventing populations given proportionate paperwork rather than an aggressive template.

Gate 3. Every category on the register has an instrument and an owner, flow-down is contractually required and audited, and founders and acquired teams have confirmatory documents.

Phase 4 — Disclosure process

The form

[ ] Reduce it to six questions: the problem, the solution in the inventor's own words, what was done before, when the idea was first formed and how that is known, who was involved, and whether it has been or will be disclosed publicly.
[ ] Do not ask engineers for prior art or claim scope.
[ ] Make submission take under twenty minutes.
[ ] Capture the conception date expressly, since it decides holdover disputes.

The response loop

[ ] Acknowledge every submission within seven days, by a named human.
[ ] Decide within a defined period, sixty or ninety days.
[ ] Communicate every decision with a reason, including refusals.
[ ] Track median days to acknowledgement and to decision.

Active harvesting

[ ] Have a patent attorney attend design and architecture reviews on a scheduled basis.
[ ] Sweep release notes, internal technical posts, conference submissions, architecture decision records, and pull request descriptions quarterly.
[ ] Ask "how did you solve that?" in review meetings and follow up on interesting answers.
[ ] Run periodic invention workshops on specific product areas.

Publication control

[ ] Route papers, conference talks, product launches, customer demonstrations, and public repositories through a pre-publication review.
[ ] Commit to a turnaround short enough that engineers use it — two weeks, not two months.
[ ] File a provisional where the timing requires it.
[ ] Track the 35 U.S.C. § 102 grace period from any inventor disclosure, and remember most jurisdictions provide none, per Prior Art in a First-Inventor-to-File World.
[ ] Record every public disclosure date against the relevant subject matter.

Gate 4. The form is short, every submission is acknowledged within a week and decided within ninety days, harvesting is scheduled rather than hoped for, and no publication reaches the public without review.

Phase 5 — Review committee and inventorship

Composition and cadence

[ ] Include a patent attorney, a senior technical person from the relevant area, and someone who owns the product roadmap.
[ ] Meet on a fixed monthly cadence.
[ ] Keep minutes recording the decision and the reason.

Criteria

[ ] Technical merit and likely patentability.
[ ] Detectability of infringement in a competitor's product.
[ ] Alignment with the product roadmap.
[ ] Defensive value against known competitors and assertion risk.
[ ] Design-around difficulty.
[ ] Whether trade secret protection is the better route.
[ ] Whether publication is imminent and forces the timing.
[ ] Foreign filing value against cost.

Trade secret route

[ ] Where the decision is not to file, decide affirmatively how the subject matter will be protected.
[ ] Add it to the trade secret inventory with access restrictions and marking.
[ ] Confirm the reasonable measures record, per Building a Trade Secret Program That Survives Litigation.

Inventorship

[ ] Determine inventorship claim by claim under 35 U.S.C. § 116, not by team membership or seniority.
[ ] Apply the conception standard from Burroughs Wellcome Co. v. Barr Laboratories, Inc. and the collaboration requirement from Kimberly-Clark Corp. v. Procter & Gamble Distributing Co..
[ ] Record the contribution analysis in writing.
[ ] Confirm no person has been added as a reward or omitted for convenience.
[ ] Where machine assistance was used, record the specific human contributions to conception, noting Thaler v. Vidal.
[ ] Plan correction under 35 U.S.C. § 256 where an error is found.
[ ] Work through the Inventorship Determination Checklist.

Duty of candour

[ ] Ask the inventors about material prior art known to them.
[ ] Route it to the attorney for consideration under 37 C.F.R. § 1.56.
[ ] Record the enquiry and the response, per the Duty of Candor Checklist.

Gate 5. The committee meets, decides against stated criteria, records reasons, determines inventorship claim by claim in writing, and asks the prior art question every time.

Phase 6 — Compensation and award terms

Jurisdictional obligations

[ ] Identify every jurisdiction in which the company employs inventors.
[ ] For Germany, assess obligations under the Employee Inventions Act: reporting, claiming, and reasonable remuneration by the official calculation methods and licence analogy.
[ ] For Japan, assess Article 35 of the Patent Act, including whether internal rules were adopted with consultation, disclosure of standards, and an opportunity to make representations.
[ ] For China, assess the statutory reward and remuneration provisions and the defaults that apply absent internal rules.
[ ] For the United Kingdom, assess sections 40 and 41 of the Patents Act 1977 and the outstanding benefit standard.
[ ] For Korea and other European jurisdictions, take local advice on the applicable regime.
[ ] Quantify historic exposure per jurisdiction rather than describing it as immaterial.
[ ] Take local advice on whether the internal scheme discharges the obligation or sits alongside it.

Scheme design

[ ] Stage the payments: disclosure, filing, grant, and a discretionary commercialisation pool.
[ ] Pay on disclosure, on a completeness standard, rather than only on filing.
[ ] Pay each named inventor rather than splitting a fixed pot between them.
[ ] Avoid revenue-attribution formulas for commercialisation awards; use a committee with published criteria.
[ ] Publish the rules.
[ ] Consult before adopting and retain the consultation record.
[ ] Meet or exceed statutory minimums where they apply.
[ ] Budget the scheme against expected disclosure and filing volumes.
[ ] Review annually and record the review.

Recognition

[ ] Name inventors publicly on filing and on grant.
[ ] Provide plaques, patent walls, or equivalent physical recognition.
[ ] Hold an annual event recognising inventors.
[ ] Provide a parallel recognition route for contributors who are not inventors, so that inventorship is not distorted by the desire to recognise people.
[ ] Confirm managers understand that adding a non-contributor as an inventor is an error under 35 U.S.C. § 256, not a favour.

Gate 6. Every jurisdiction's obligations are identified and quantified, a published scheme exists and was adopted with consultation where required, payments are budgeted, and recognition runs alongside money.

Phase 7 — Ownership confirmation records

[ ] Execute a confirmatory assignment for every application, naming it by title, serial number, and filing date.
[ ] Obtain the signature of every named inventor.
[ ] Execute at or shortly after filing, while the inventor is employed.
[ ] Where an inventor has left, died, or refuses, prepare a 35 U.S.C. § 118 filing with a substitute statement.
[ ] Record every assignment at the patent office, noting that under 35 U.S.C. § 261 an unrecorded assignment is void against a subsequent bona fide purchaser unless recorded within the prescribed period.
[ ] Record in every jurisdiction where the family is filed, checking local requirements.
[ ] Record corporate name changes, mergers, and intra-group transfers.
[ ] Confirm the recorded owner is a live entity.
[ ] Reconcile the recorded chain against the actual chain annually.
[ ] Maintain, for each asset, a retrievable ownership file: employment or engagement instrument, jurisdiction appendix, disclosure record, inventorship analysis, confirmatory assignment, and recordation confirmation.
[ ] Test retrieval: pick three patents at random and produce the complete file within one working day.
[ ] Work the mechanics through the Assignment Recordal Checklist and reflect gaps in the IP Audit Checklist.

Gate 7. Every application has an executed, recorded confirmatory assignment; the recorded chain matches reality; and the complete ownership file for any asset can be produced in a day.

Phase 8 — Onboarding

[ ] Schedule ten minutes on day one, before system access is granted.
[ ] Explain in plain language what the agreement assigns and what it does not.
[ ] Walk through the prior inventions schedule in conversation rather than handing it over.
[ ] Ask directly whether the person has prior work relating to what they will do here, and record the answer including "nothing".
[ ] Ask about outstanding obligations to previous employers: assignment agreements, holdover clauses, confidentiality obligations, restrictive covenants.
[ ] Obtain copies of any such agreement where one exists.
[ ] Give an explicit written contamination instruction: no documents, no code, no old notes, nothing reproduced from memory.
[ ] Obtain a signed acknowledgement of that instruction.
[ ] Assess whether the hire is high risk — direct competitor, adjacent role — and if so consider a temporary assignment away from the overlapping area or a clean-room protocol, per the Competitive Intelligence Checklist.
[ ] Explain the disclosure process and the award scheme.
[ ] Confirm the correct jurisdiction appendix was applied.
[ ] Repeat the conversation on any role change into a new product area.
[ ] Store the records where they can be produced years later.

Gate 8. Every joiner has had the conversation, the schedule is completed rather than blank, prior obligations are recorded, and the contamination instruction is acknowledged in writing.

Phase 9 — Departure handling

Before the last day

[ ] Ask what the person is working on that has not been disclosed, and record the answer.
[ ] Obtain confirmatory assignments for every application on which they are named, filed or pending.
[ ] Obtain assignments for disclosed inventions not yet filed.
[ ] Confirm the holdover obligation in writing and explain its scope.
[ ] Confirm confidentiality obligations by reference to the specific categories of information that matter, not by reciting the clause.
[ ] Confirm return of all materials and devices.

Preservation

[ ] Suspend the standard device reimaging and account deprovisioning schedule.
[ ] Image devices where the departure is to a competitor, using a qualified examiner with chain of custody.
[ ] Preserve email, chat, repository history, and access logs before any retention cycle runs.
[ ] Record the destination employer and role.

Access

[ ] Revoke repository, system, document, and building access on the last day.
[ ] Review what was accessed and downloaded in the final weeks.
[ ] Escalate anomalies immediately rather than at the next review cycle.

Follow-up

[ ] Assess whether notification to the new employer is appropriate, and draft it carefully to avoid a tortious interference exposure.
[ ] Diary the holdover period and check for relevant filings by or naming the individual.
[ ] Where misappropriation is suspected, assess the claim under 18 U.S.C. § 1836 and the inevitable disclosure landscape exemplified by PepsiCo, Inc. v. Redmond.
[ ] Coordinate with the Restrictive Covenant and Departure Checklist and Where an Employee Can Go.

Gate 9. Pending disclosures are captured, confirmatory assignments are obtained while signature is still easy, evidence is preserved before any retention schedule destroys it, and access is revoked on the day.

Phase 10 — Chain of title remediation

Inventory

[ ] List every current and former employee, contractor, consultant, intern, advisor, and academic collaborator who might have contributed to an invention.
[ ] For each, locate the instrument: executed agreement, version, date, and jurisdiction appendix.
[ ] Flag every gap, every "agrees to assign" formulation, and every missing appendix.
[ ] Prioritise by asset value — start with the people named on the most valuable families.

Fix

[ ] Obtain confirmatory present assignments from every current employee whose agreement uses promissory language, framed as an administrative update.
[ ] Obtain agreements where none exists, with an express confirmation covering everything since the engagement began.
[ ] Obtain founder confirmatory assignments listing pre-incorporation work by name.
[ ] Convert contractor work-for-hire recitals into present assignments.
[ ] Obtain direct assignments from subcontractors where flow-down is missing.
[ ] Obtain assignments from former employees named on live families, while they are still reachable.
[ ] Record everything that was missing.

Quantify what cannot be fixed

[ ] List every individual who cannot be located or will not sign.
[ ] Assess the practical risk per asset.
[ ] Consider a 35 U.S.C. § 118 route where filing is the issue.
[ ] Record the residual exposure and disclose it rather than leaving it to be discovered.

Fix the process

[ ] Change the intake procedure so the same gap does not reopen.
[ ] Assign an owner to the coverage register.
[ ] Diary an annual reconciliation.
[ ] Connect to What You Actually Own for the wider portfolio exercise.

Gate 10. The population is inventoried, gaps are fixed in priority order while people remain reachable, residual exposure is quantified and disclosed, and the intake process has been changed so the problem does not recur.

Metrics

[ ] Percentage of the inventing population with a current, correct, retrievable instrument.
[ ] Percentage of employees with the correct jurisdiction appendix, tested by sample.
[ ] Percentage of prior inventions schedules completed rather than blank.
[ ] Percentage of applications with an executed, recorded confirmatory assignment.
[ ] Disclosures per hundred technical staff per year, trended.
[ ] Median days from disclosure to acknowledgement, target under seven.
[ ] Median days from disclosure to decision, target under ninety.
[ ] Filing rate from disclosures, watched at both extremes.
[ ] Award scheme cost per filing, budgeted and actual.
[ ] Foreign inventor compensation exposure, quantified per jurisdiction.
[ ] Departures with confirmatory assignments obtained and pending disclosures captured.
[ ] Chain-of-title exceptions outstanding, each with an owner and a date.

Twelve failures that recur

[ ] "Agrees to assign" language covering the founding cohort. The most valuable inventions, the weakest instrument.
[ ] No agreement at all for the earliest employees. The paperwork was going to be done and then the product shipped.
[ ] Founder work predating incorporation with no confirmatory assignment. The most expensive single gap.
[ ] Contractor agreements relying on work-made-for-hire recitals. Nothing patentable has been assigned.
[ ] Broken flow-down to an agency's subcontractor. The chain fails one link below where anybody looked.
[ ] Blank prior inventions schedules. Nobody knows whether the blank is meaningful.
[ ] The wrong state appendix for a remote employee. A stale location field in a personnel system.
[ ] No confirmatory assignment at filing. Ownership rests on a general contract argument.
[ ] Unrecorded assignments. The recorded chain does not match reality.
[ ] A disclosure process nobody uses. Three unanswered submissions taught the whole team not to bother.
[ ] Unquantified foreign inventor compensation. A material number that has never appeared in a budget.
[ ] Nobody owning the programme. Every other failure is a symptom of this one.

The agreement, clause by clause

A drafting review checklist for the instrument itself. Work down it with the template open.

Recitals and definitions

[ ] "Company" defined to include affiliates and successors, so a reorganisation does not orphan the agreement.
[ ] "Invention" defined to include conception alone, not only reduction to practice.
[ ] "Confidential Information" defined to include third-party information the company holds under obligation.
[ ] "Prior Inventions" defined by reference to the schedule.
[ ] Definitions consistent with the confidentiality agreement, if separate, so the two do not conflict.

Assignment

[ ] Present tense operative words.
[ ] "Irrevocably" included.
[ ] Worldwide scope, all media, all forms, in perpetuity.
[ ] Includes the right to claim priority and to file in any jurisdiction.
[ ] Includes the right to sue for past infringement, which is separately required in some jurisdictions.
[ ] Includes registrations, applications, continuations, divisionals, reissues, and foreign counterparts.

Employee protections

[ ] Prior inventions schedule with a positive statement where the answer is "none".
[ ] Statutory carve-out appendix incorporated by reference and physically attached.
[ ] Statutory notice given and acknowledged.
[ ] A provision confirming that nothing in the agreement restricts protected activity where local law requires such a statement.
[ ] A whistleblower immunity notice where required, since its omission can forfeit remedies in a later trade secret action.

Operational clauses

[ ] Disclosure obligation with a route and a timescale.
[ ] Further assurances with an express obligation to cooperate after employment ends.
[ ] Power of attorney, coupled with an interest and expressly irrevocable.
[ ] Records obligation requiring the employee to keep and surrender notebooks, files, and records.
[ ] Holdover clause, scoped and severable.
[ ] Return of materials on termination.
[ ] Survival clause listing the obligations that continue.
[ ] Severability and no-waiver.
[ ] Governing law and, where appropriate, an express acknowledgement of the jurisdiction whose invention statute applies.
[ ] Entire agreement clause checked against any offer letter or handbook that also mentions inventions, since an inconsistent handbook can undermine the agreement.

Special populations, handled specifically

[ ] Employees with side projects. Document the boundary in writing at the outset. The carve-out protects a genuinely unrelated venture and not an adjacent one, and discovering that after the side project raises money is a poor way to learn it.
[ ] Open source contributors. Publish a contribution policy stating what may be contributed, under which licence, with what approval, and how the contributor licence agreement interacts with the assignment, per Copyleft and Consequences.
[ ] Academic publishers. Pre-publication review with a two-week committed turnaround, and a provisional filing where the timing requires it.
[ ] Secondees. Confirm the assignment obligation runs to the right entity and does not conflict with the host's terms.
[ ] Government-funded researchers. Subject invention disclosure timelines and government licence rights override the ordinary programme.
[ ] Works council jurisdictions. Confirm consultation requirements for disclosure obligations and award schemes.
[ ] Non-inventing roles. Apply proportionate paperwork; an aggressive template applied indiscriminately is itself a compliance problem in some jurisdictions.
[ ] Contractors who are also employees elsewhere. Confirm their other employer's assignment obligations do not conflict with the engagement, and record the enquiry.

The diligence dry run

The fastest way to test the programme is to run the exercise an acquirer would run, before an acquirer runs it. Allow one week.

Pick the assets

[ ] Select the ten patent families the business would say are most valuable.
[ ] For each, list every named inventor.
[ ] For each inventor, list their employment or engagement status at the time of conception.

Produce the file

[ ] The executed instrument covering that person at that time, in the version then current.
[ ] The jurisdiction appendix applied, and evidence of the statutory notice.
[ ] The prior inventions schedule, completed.
[ ] The invention disclosure with its date and stated conception date.
[ ] The inventorship analysis recorded at the committee.
[ ] The confirmatory assignment naming the application.
[ ] The recordation confirmation from each office where the family is filed.
[ ] Any award payment records, if a scheme applies.

Score honestly

[ ] Count the files that are complete. In most companies running this for the first time it is under half.
[ ] Count the assets whose ownership rests solely on a general employment agreement with promissory language.
[ ] Count the inventors who have left and would now need to be found.
[ ] Count the assets with an unrecorded or mismatched chain.
[ ] Count the foreign inventors with a potential statutory remuneration claim.

Then fix it in that order, because the assets that matter most are the ones an acquirer will examine first, and the people who can still be reached with a signature are a shrinking population.

Records: the master list

For each item, confirm it exists, is retrievable, and has an owner.

[ ] Every historical version of the agreement, dated.
[ ] The coverage register mapping populations to instruments.
[ ] Executed instruments for every current and former contributor.
[ ] Jurisdiction appendices and statutory notice acknowledgements.
[ ] Prior inventions schedules, including positive "none" statements.
[ ] Onboarding contamination acknowledgements.
[ ] Records of prior-employer obligations disclosed at hire.
[ ] Invention disclosure records with dates and conception dates.
[ ] Pre-publication review records and public disclosure dates.
[ ] Review committee minutes with decisions and reasons.
[ ] Inventorship contribution analyses.
[ ] Trade secret inventory entries for inventions not filed.
[ ] Duty of candour enquiries and responses.
[ ] Confirmatory assignments per application.
[ ] Recordation confirmations per jurisdiction.
[ ] Corporate change recordations.
[ ] Award scheme rules, consultation records, and payment history.
[ ] Foreign compensation exposure assessments per jurisdiction.
[ ] Exit records: pending disclosures, assignments obtained, obligations confirmed.
[ ] Device preservation and forensic chain of custody records.
[ ] Access revocation logs.
[ ] The chain-of-title exception register, with owners and dates.

Transaction-specific variations

The programme is the same; the emphasis shifts with what is happening to the company.

Preparing for a financing

[ ] Complete the diligence dry run at least three months before the process starts.
[ ] Prioritise the founding cohort and the core technology families.
[ ] Obtain confirmatory assignments from current employees before the process, when the request is routine rather than urgent.
[ ] Prepare a short written summary of the residual exceptions with an assessment, so the answer to the diligence question is a document rather than a scramble.

Preparing for a sale

[ ] Extend the exercise to every asset, not only the top ten.
[ ] Reconcile the recorded chain in every jurisdiction, since foreign recordation gaps are found late and delay closing.
[ ] Quantify foreign inventor compensation exposure with local advice, since an unquantified number invites a large escrow.
[ ] Confirm the entity holding the assets is the entity being sold, and that intra-group transfers were recorded.

Acquiring a company

[ ] Request every historical version of the target's agreement.
[ ] Test a sample of assets rather than accepting a schedule.
[ ] Test contractor and agency coverage specifically, since it is the most common gap.
[ ] Test founder pre-incorporation work.
[ ] Require remediation as a condition or price the exposure.
[ ] Plan the post-closing integration into the acquirer's programme within the first year, per the Carve-Out and Divestiture IP Checklist where the deal is a separation.

Spinning out or carving out

[ ] Identify which entity employed each inventor at the time of conception, since the answer determines which side of the split owns the asset.
[ ] Execute confirmatory assignments to the correct entity before separation.
[ ] Record the transfers promptly, since a registry that still names the parent creates practical problems for the new entity's own filings.

Litigating

[ ] Expect the chain of title to be attacked, since standing depends on it.
[ ] Produce the complete ownership file early rather than under a motion.
[ ] Expect inventorship to be challenged, and rely on the contemporaneous contribution analysis rather than on recollection.

The one-day test

The quickest diagnostic on any invention programme takes a day. Pick three granted patents at random from the portfolio and ask for five documents on each: the instrument covering every named inventor at the time of conception, the jurisdiction appendix and notice, the completed prior inventions schedule, the confirmatory assignment naming the application, and the recordation confirmation for every jurisdiction where the family is filed.

A programme that produces all fifteen documents in a day is in genuinely good order and will survive any diligence. A programme that produces eight is the ordinary case and has perhaps six months of quiet remediation ahead of it. A programme that produces two has an agreement rather than a programme, and the gap will be found by somebody with a purchase price to renegotiate.

A closing note on tone

Everything in this checklist is administrative, and the temptation is to treat it as a compliance exercise imposed on unwilling engineers. That framing produces blank schedules, unread agreements, and a disclosure inbox nobody opens.

The better framing is that the programme exists to make sure the people who invent things get named on them, get recognised for them, and — where the law provides for it — get paid for them, while the company that funded the work owns what it paid for. Presented that way, the prior inventions conversation becomes a protection for the employee rather than an interrogation, the disclosure form becomes an opportunity rather than paperwork, and the confirmatory assignment becomes a formality nobody resists.

The documents are the same either way. The completion rate is not.

Key Authorities at a Glance

Ownership and transfer. 35 U.S.C. § 261; 35 U.S.C. § 115; 35 U.S.C. § 118; 35 U.S.C. § 262.

Controlling cases. Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.; FilmTec Corp. v. Allied-Signal Inc.; Standard Parts Co. v. Peck; United States v. Dubilier Condenser Corp..

Inventorship. 35 U.S.C. § 116; 35 U.S.C. § 256; Burroughs Wellcome Co. v. Barr Laboratories, Inc.; Kimberly-Clark Corp. v. Procter & Gamble Distributing Co.; Thaler v. Vidal.

Copyright. 17 U.S.C. § 101; 17 U.S.C. § 204; 17 U.S.C. § 106A; 17 U.S.C. § 203; Community for Creative Non-Violence v. Reid.

Disclosure and candour. 35 U.S.C. § 102; 37 C.F.R. § 1.56.

Trade secret and mobility. 18 U.S.C. § 1836; PepsiCo, Inc. v. Redmond; Edwards v. Arthur Andersen LLP.

State and foreign regimes. California Labor Code § 2870; Employee Inventor Compensation.

| Phase | Authority | Record that proves it | | --- | --- | --- | | 1 Agreement | FilmTec; 35 U.S.C. § 261 | Executed present assignment | | 2 Carve-outs | California Labor Code § 2870 | Appendix applied and notice given | | 3 Coverage | 35 U.S.C. § 262 | Coverage register | | 4 Disclosure | 35 U.S.C. § 102 | Dated form with conception date | | 5 Review | 35 U.S.C. § 116 | Committee minutes; inventorship analysis | | 6 Awards | German Act; Japanese art. 35 | Published rules; consultation record | | 7 Confirmation | 35 U.S.C. § 261 | Recorded confirmatory assignment | | 8 Onboarding | 18 U.S.C. § 1836 | Signed contamination acknowledgement | | 9 Departure | Holdover clause | Exit record; forensic preservation | | 10 Remediation | 35 U.S.C. § 118 | Exception register with owners |