Non-Disclosure / Confidentiality Agreement Measures for Employees for Protection of IPRs Employer and Employee Ownership of Intellectual Property

1. 0
NON-DISCLOSURE, CONFIDENTIALITY
AND IP OWNERSHIP ISSUES
IN COMPANY WORK RULES
Kowit Somwaiya, Managing Partner
Paramee Kerativitayanan, Associate
LawPlus Ltd.
Unit 1401, 14th Floor, 990 Abdulrahim Place, Rama IV Road, Bangkok 10500, Thailand
Tel. +66 (0)2 636 0662, Fax +66 (0)2 636 0663
www.lawplusltd.com
25 January 2019

2. 1
The information provided in this document is general in nature and may not
apply to any specific situation. Specific advice should be sought before taking
any action based on the information provided. Under no circumstances shall
LawPlus Ltd. or any of its directors, partners and lawyers be liable for any
direct or indirect, incidental or consequential loss or damage that results from
the use of or the reliance upon the information contained in this document
Copyright © 2019 LawPlus Ltd.

3. 2
Non-disclosure, Confidentiality and
IP Ownership Issues in Company Work Rules

4. 3
Non-Disclosure / Confidentiality Agreement
 A non-disclosure agreement (NDA) or confidentiality agreement is a legal contract
between two or more parties that signifies a confidential relationship exists between
them.
 The parties are restricted from releasing information regarding any business
processes of the other party that are integral to that party's operations.
 Major elements in an NDA:
● the parties to the agreement,
● the definition of what constitutes confidential information,
● the exclusions from confidential information,
● the obligations of the receiving party,
● the time periods involved and miscellaneous provisions.
 If an NDA is breached by one party, the other party may seek court action to
prevent any further disclosures and may sue the disclosing party for monetary
damages.

5. 4
Measures for Employees for Protection of IPRs
 New Employees
● Obligations towards former employer
● Assign all rights to inventions developed in the course of employment
● Non-disclosure or confidentiality agreement
● Non-compete provision
 Current Employees
● Prevent inadvertent disclosure (ignorance)
● Train and educate
● NDA for particular task
● Departing employees
● Further limit access to data and deletion of data
● Return of documents, data and devices to employer
● Treat fairly & compensate reasonably for IP work

6. 5
Employer and Employee Ownership of Intellectual Property (1)
 Intellectual property created during the course of an employee's employment
does not always equate to the employer's ownership of any and all intellectual
property.
 Patent Act
● Employers or people commissioning work have the right to apply for
patents for inventions made during an employment or work-for-hire
contract, unless the contract states otherwise.
● An employee-inventor has the right to receive remuneration in addition to
his or her regular salary if the employer gains certain benefits from the use
of the invention.
● This right to receive remuneration cannot be exempted by any provisions in
the employment contract.

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Employer and Employee Ownership of Intellectual Property (2)
 Copyright Act
● A copyright work created by a person in the course of employment belongs
to the creator (i.e., the employee), unless otherwise agreed in writing.
● The employer is entitled to communicate the work to the public in
accordance with the purpose of the employment.
● If the copyright work is created in the course of commissioned work, the
ownership of the copyright belongs to the employer who commissioned the
work. Therefore, the employer does not need to give remuneration to the
creator of the work, apart from the agreed wages set by the hire agreement.

8. 7
Employer and Employee Ownership of Intellectual Property (3)
 Businesses involved in creating new products or processes absolutely must be
sure that their employment agreements and work rules clearly address the
issue of ownership of intellectual property to works created during the
course of employment.
 When a newly created work may qualify as a potential patent application, the
employer must have a remuneration scheme in place to encourage staff to
create, while ensuring compliance with the law.