Inventions Assignment[ and Confidentiality] Agreement
This Inventions Assignment and Confidentiality Agreement is made on [EFFECTIVE DATE] (the "Effective Date") between [ASSIGNEE FULL NAME], whose principal place of residence is at (the "Assignor") and [COMPANY LEGAL NAME], a [CORPORATE JURISDICTION] corporation with its principal place of business at [COMPANY ADDRESS] (the "Assignee").
A. The Assignor is about to become employed or has been employed by the Company.
B. The Assignor has agreed to assign to the Company his or her interest in all inventions developed during the term of his or her employment with the Company.
The parties agree as follows:
1.1. ["Confidential Information" means all [material] [non-public] [business-related] information, written or oral[, whether or not it is marked as confidential], disclosed or made available to the Assignor,[ directly or indirectly,] through any means of communication [or observation] by the Company[ or any of its affiliates or representatives] to[ or for the benefit of] the Assignor, but does not include information that
(a) is or becomes publicly known through no wrongful act of the recipient,
(b) was received in good faith on a non-confidential basis from a source other than the disclosing party or its Representatives,
(c) was in the recipient's possession before its disclosure by the disclosing party or its Representatives,
(d) was independently developed by the recipient without breach of this agreement, or
(e) is explicitly approved for release to a third party by Notice from the disclosing party to the recipient.]
1.2. "Company Inventions" means all Inventions that the Assignor makes, either solely or jointly with others, during his or her employment with the Company.
1.3. "Future Inventions" means any Inventions that may relate, directly or indirectly, to the performance of the Assignor's services for the Company and conceived or made by the Assignor within [FUTURE INVENTION PERIOD] after termination of his or her employment.
1.4. "Specified State" means [NAME OF JURISDICTION].
1.5. "Inventions" means all discoveries, designs, developments, improvements, innovations, inventions, works of authorship, information fixed in any tangible medium of expression, trade secrets, know-how, ideas, mask works, trademarks, service marks, trade names and trade dress, and all related intellectual property rights.
1.6. "Prior Inventions" means all Inventions that the Assignor made before the start of his or her employment with the Company.
2. Assignment of Inventions. The Assignor shall assign, and hereby assigns, to the Company all his or her interest in all Inventions developed during his or her employment with the Company.
3. Retention of Prior Inventions. Schedule A lists all the Assignor's Prior Inventions, none of which are assigned to the Company but remain the Assignor's property, subject to the terms of the following section (License of Prior Inventions). If there is no list attached, the Assignor confirms that there are no Prior Inventions.
4. License of Prior Inventions. If the Assignor incorporates any Prior Invention into any Company product or process, the Assignor hereby grants to the Company a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to use, modify, and sell the Prior Invention as part of or in connection with the particular product, process, or machine.
5. Inventions Assigned to US Government. The Assignor shall assign, and hereby assigns, to the United States government all the Assignor's interest in any Inventions whenever full title is required to be in the United States in connection with any contract between the Company and the United States government or any of its agencies.
6. Disclosure of Inventions. The Assignor shall give the Company prompt Notice of any Invention that he or she makes during the term of his or her employment.
7. Records of Inventions. The Assignor shall maintain complete and current written records of all Company Inventions made during the term of employment. The Company may specify the format in which the Assignor will keep these records. The Assignor shall make these records available to the Company upon its request. These records are Company property.
8. Term. This agreement will begin on the Effective Date and end on the date that the Assignor's employment with the Company ends, for whatever reason.
9. No Conflicts. The Assignor represents and warrants to the Company, acknowledging that the Company is relying on this statement, that he or she is under no restriction or obligation that may affect the performance of his or her obligations under this agreement.
10. Work for Hire. The parties acknowledge that the Assignor's development or creation of any Company Invention is "work for hire" within the meaning of the Copyright Act of 1976.
11. Exception re Laws of Specified State. The Assignor acknowledges that Company Inventions do not include, and the terms of this agreement requiring assignment of Company Inventions do not apply to, any Company Invention that qualifies fully for exclusion under the laws of the Specified State. In order to assist in determining which ones qualify for this exclusion, the Assignor shall give the Company prompt Notice, during and after the term of his or her employment, of all Inventions that the Assignor solely or jointly conceived, developed, or reduced to practice during the term of his or her employment.
12. Future Inventions. The Assignor acknowledges that any of his or her Future Inventions may have been conceived in significant part while employed by the Company. Accordingly, the Assignor agrees that all Future Inventions will be presumed to have been conceived during his or her employment with the Company, unless the Assignor can prove the contrary, and therefore are assigned to the Company in accordance with this agreement.
13. Consent to Notify New Employer. If the Assignor leaves the Company's employ for any reason, the Assignor consents to the Company contacting any new employer about the rights and obligations that the Assignor owes under this agreement and, if appropriate, providing the new employer with a copy.
14. Breach of this Agreement. The Assignor acknowledges that any breach of this agreement constitutes a material breach of his or her employment agreement, entitling the Company to terminate the employment agreement without notice.
15. IP Registrations
15.1. Assistance with IP Registrations. The Assignor shall assist the Company, at the Company's expense, in securing the Company's intellectual property rights in and to the Company Inventions.
15.2. Power of Attorney. If the Company is unable, after reasonable effort, to obtain the Assignor's signature to secure the Company's intellectual property rights in and to the Company Inventions, the Assignor hereby irrevocably appoints the Company and its duly authorized officers and agents as his or her agent and attorney in fact to act for and on the Assignor's behalf to sign and file all necessary or appropriate documents and to do all other lawfully permitted acts to enable the Company to fully secure those rights, with the same legal force and effect as if signed by the Assignor.
16. [Confidential Information
16.1. Confidentiality Obligation. The Assignor shall hold all Confidential Information in confidence.
16.2. Use Solely for Required Purpose. The Assignor shall use the Confidential Information in accordance with the terms of this agreement and solely for the purpose of carrying out his or her employment obligations.
16.3. Former Employer Information. The Assignor shall not
(a) improperly use or disclose any proprietary information or trade secrets of any former or concurrent employer or other person or entity, or
(b) bring onto the Company's premises any unpublished document or proprietary information belonging to any such employer, person, or entity
without their prior written consent.
16.4. Third Party Information. The Assignor recognizes that the Company has received and in the future may receive from third parties their confidential or proprietary information subject to a duty on the Company's part to maintain the confidentiality of that information and to use it only for certain limited purposes. The Assignor shall hold all such confidential or proprietary information in confidence and shall not to disclose it to any person or entity or to use it except as necessary in carrying out his or her work for the Company consistent with the Company's agreement with the third party.
16.5. Value and nature of Confidential Information. The parties acknowledge that the Confidential Information is proprietary and has competitive value. Accordingly, any disclosure to the Company's competitors or to the public would be detrimental to the Company's best interests, which may incur losses, costs, and damages as a result.]
17. Effect of Termination. Upon termination of this agreement, the Assignor shall deliver to the Company all property, both originals and copies, belonging to the Company, its successors, or assigns that is under his or her direct or indirect control.
18.1. Assignor's Indemnity. The Assignor shall indemnify the Company and its directors, officers, employees, shareholders, partners, agents, and affiliates, against all claims, liability, costs, and expenses (including legal fees) arising from any third party claim or proceeding brought against the Company alleging infringement of the third party's intellectual property or other rights arising out of or relating to the Inventions that the Assignor assigns to the Company under this agreement.
18.2. Notice of Claim. The Company shall give prompt Notice to the Assignor of any claim or potential claim for indemnification under this section.
19.1. Entire Agreement. This agreement contains all the terms agreed to by the parties relating to its subject matter. It replaces all previous discussions, understandings, and agreements.
19.2. Further Assurances. Each party, upon receipt of notice from the other party, shall sign (or cause to be signed) all further documents, do (or cause to be done) all further acts, and provide all assurances as may reasonably be necessary or desirable to give effect to the terms of this agreement.
19.3. Amendment. This agreement may only be amended by a written document signed by both parties.
19.4. Assignment. The Assignor may not assign this agreement, or any of his or her rights or obligations under this agreement. The Company may assign this agreement, or any of its rights or obligations under this agreement, at any time and without Notice to the Assignor.
19.5. Acknowledgement of Contract Terms. The Assignor acknowledges that he or she
(a) has read this agreement,
(b) understands its terms,
(c) has had the opportunity to consult[ and has consulted] with independent legal counsel, and
(d) has signed it voluntarily.
(a) Form of Notice. All notices and other communications between the parties must be in writing.
(b) Method of Notice. Notices must be given by (i) personal delivery, (ii) a nationally-recognized, next-day courier service, (iii) first-class registered or certified mail, postage prepaid[, (iv) fax][ or (v) electronic mail] to the party's address specified in this agreement, or to the address that a party has notified to be that party's address for the purposes of this section.
(c) Receipt of Notice. A notice given in accordance with this agreement will be effective upon receipt by the party to which it is given or, if mailed, upon the earlier of receipt and the fifth day following mailing.
19.7. Remedies Cumulative. The rights and remedies provided to a party under this agreement are cumulative and in addition to, not exclusive of or in substitution for, any rights or remedies otherwise available to that party.
19.8. Survival. Sections 3.6 (Records of Inventions), 8 (Future Inventions), 9 (Consent to Notify New Employer), 11 (Intellectual Property Registrations), 12 (Confidential Information), 13 (Conflicting Employment), 14 (Non-Solicitation), 15 (Effect of Termination), and 16.1 (Assignor's Indemnity) survive the termination of this agreement.
19.9. Severability. If any part of this agreement is declared unenforceable or invalid, the remainder will continue to be valid and enforceable.
19.10. Waiver. A party's failure or neglect to enforce any of rights under this agreement will not be deemed to be a waiver of that party's rights.
19.11. Equitable Relief. The Assignor acknowledges that the breach or threatened breach of any of his or her obligations under sections 12 (Confidential Information), 13 (Conflicting Employment), or 14 (Non-Solicitation) would not be susceptible to adequate relief by way of monetary damages only. Accordingly, the Company may, in that case, apply to court for any applicable equitable remedies (including injunctive relief), without the need to post any security.
19.12. Governing Law. This agreement will be governed by and construed in accordance with the laws of the State of [GOVERNING LAW STATE ], without regard to its conflict of laws rules.
19.13. Waiver of Jury Trial. Each party irrevocably waives its rights to trial by jury in any action or proceeding arising out of or relating to this agreement.
(a) Statutes, etc. Unless specified otherwise, any reference in this agreement to a statute includes the rules and policies made under that statute and any provision that amends, supplements, supersedes, or replaces that statute or those rules or policies.
(b) Number and Gender. Unless the context requires otherwise, words importing the singular number include the plural and vice versa; words importing gender include all genders.
(c) Headings. The headings used in this agreement and its division into sections, schedules, and other subdivisions do not affect its interpretation.
(d) Internal References. References in this agreement to sections, schedules, and other subdivisions are to those parts of this agreement.
(e) Construction of Terms. The parties have each participated in settling the terms of this agreement. Any rule of legal interpretation to the effect that any ambiguity is to be resolved against the drafting party will not apply in interpreting this agreement.
19.15. Counterparts. This agreement may be signed in any number of counterparts, each of which is an original and all of which taken together constitute one single document.
19.16. Effective Date. This agreement is effective as of the date shown at the top of the first page, even if any signatures are made after that date.
This agreement has been signed by the parties.
SCHEDULE A - LIST OF PRIOR INVENTIONS AND ORIGINAL WORKS OF AUTHORSHIP
Identifying Numbers and Brief Description: