A new client came with pre-existing NDA's drafted by a big-firm general practice with a dedicated IP section. This client, a start up, discovered my flat-fee services and made the switch from bill-by-the-hour. I was surprised - or rather, shocked - to find that the NDA's made no mention of patent applications and who owns such inventions, and who must assign what to whom.

I typically include in NDAs a clause the expressly defines that my client, typically the inventor with a need for someone to reduce the concept to practice, maintains the IP and, additionally, is entitled to newly developed IP based on the business relationship - i.e. improvements, methods, new machines, etc.

The lesson learned: make certain you have an express, written agreement defining the intention of the parties to co-developed IP. A patent, by law, belongs to the inventor (not the employer) unless there is a contract to the contrary (assignment). Saavy employers will include an assignment clause to employment agreements.