THIS INVENTIONS ASSIGNMENT AND CONFIDENTIALITY AGREEMENT (this "Agreement") is made as of [EFFECTIVE DATE] (the "Effective Date") by and between [COMPANY FULL NAME], with its principal place of business at [COMPANY ADDRESS] ("[COMPANY NAME]") and [ASSIGNEE FULL NAME], with its principal place of [ASSIGNEE BUSINESS OR RESIDENCE] at [ASSIGNEE ADDRESS] ("[ASSIGNEE]"), (sometimes collectively referred to as the "Parties").
1.1 "Confidential Information" means all confidential knowledge, data or information related to Company's business or its actual or demonstrably anticipated research or development, including without limitation:
(a) trade secrets, inventions, ideas, processes, computer source and object code, data, formulae, programs, other works of authorship, know-how, improvements, discoveries, developments, designs, and techniques;
(b) information regarding products, services, plans for research and development, marketing and business plans, budgets, financial statements, contracts, prices, suppliers, and customers;
(c) information regarding the skills and compensation of Company's employees, contractors, and any other service providers of Company; and
(d) the existence of any business discussions, negotiations, or agreements between Company and any third party.
1.2 "Inventions" means all discoveries, designs, developments, improvements, innovations, inventions (whether or not protectable under patent laws), works of authorship, information fixed in any tangible medium of expression (whether or not protectable under copyright laws), trade secrets, know-how, ideas (whether or not protectable under trade secret laws), mask works, trademarks, service marks, trade names and trade dress.
2.1 Inventions Retained. Exhibit A lists all Inventions made by [ASSIGNEE] prior to employment with the Company ("Prior Inventions") that are not assigned to the Company. If no such list is attached, [ASSIGNEE] represents that there are no such Prior Inventions.
2.2 Inventions Licensed. If [ASSIGNEE] incorporates into a Company product, process or machine a Prior Invention, the Company is hereby granted and shall have a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use and sell such Prior Invention as part of or in connection with such product, process or machine.
2.3 Assignment of Inventions. [ASSIGNEE] shall assign to the Company, or its designee, all rights, title, and interest in and to all Inventions that [ASSIGNEE] has conceived, invented, created or reduced to practice (either prior to the date hereof or at any time during the term of employment) that relates to the [COMPANY]'s business or result from employment.
2.4 Inventions Assigned to the United States. [ASSIGNEE] agrees to assign to the United States government all [ASSIGNEE HIS-HER] rights, title, and interest in and to any and all Inventions whenever such full title is required to be in the United States by a contract between the Company and the United States or any of its agencies.
2.5 Works for Hire. [ASSIGNEE] further acknowledges that after original works of authorship that are made by him (solely or jointly with others) within the scope of and during the period of [ASSIGNEE HIS-HER] employment with the Company and which are protected by copyright are "works made for hire," as that term is defined in the United States Copyright Act.
2.6 Exception to Assignments. [ASSIGNEE] understands that the Company Inventions will not include, and the provisions of this Agreement requiring assignment of inventions to the Company do not apply to, any invention which qualifies fully for exclusion under the provisions of applicable state law, if any (Exhibit B). In order to assist in the determination of which inventions qualify for such exclusion, [ASSIGNEE] will advise the Company promptly in writing, during and after the term of employment, of all Inventions solely or jointly conceived or developed or reduced to practice by [ASSIGNEE] during the period of the employment.
2.7 Disclosure of Inventions. [ASSIGNEE] agrees to make promptly make full written disclosure to the Company of any Invention made during the term of employment.
2.8 Maintenance of Records. [ASSIGNEE] agrees to keep and maintain adequate and current written records of all Inventions made by him (solely or jointly with others) during the term of my employment with the Company. The records will be in the form of notes, sketches, drawings, and any other format specified by the Company. The records will be available to and remain the sole property of the Company at all times.
2.9 Future Inventions. Employee recognizes that Inventions relating to the performance of services for the Company and conceived or made by Employee, alone or with others, within [FUTURE INVENTION PERIOD] after termination of employment may have been conceived in significant part while employed by the Company. Accordingly, Employee agrees that such Inventions and Proprietary Information shall be presumed to have been conceived during employment with the Company, are to be assigned to the Company unless, and until Employee have established the contrary.
3.1 No Breach. [ASSIGNEE] represents that [ASSIGNEE HIS-HER] performance of all the terms of this Agreement will not breach any agreement to keep in confidence proprietary information acquired by him in confidence or in trust prior to [ASSIGNEE HIS-HER] employment by the Company.
3.2 No Conflict. [ASSIGNEE] has not entered into, and [ASSIGNEE] agrees [ASSIGNEE] will not enter into, any oral or written agreement in conflict herewith.
4.1 Notification of New Employer. In the event that [ASSIGNEE] leaves the employ of the Company, [ASSIGNEE] hereby grants consent to notification by the Company a new employer about the rights and obligations under this Agreement.
4.2 Conflict of interest Guidelines. [ASSIGNEE] agrees to comply with the Conflict of Interest Guidelines attached as Exhibit D hereto.
4.3 Acknowledgement of Understanding. The [ASSIGNEE] that acknowledges that:
(a) [ASSIGNEE] fully understands the nature and consequences of this Agreement, and
(b) [ASSIGNEE] has been afforded the opportunity to obtain independent legal advice with respect to this Agreement.
5.1 Patent and Copyright Registrations
(a) Assistance. [ASSIGNEE] agrees to assist the Company, or its designee, at the Company's expense, to secure the Company's rights in the Inventions or other related intellectual property rights, including the disclosure to the Company of all pertinent information and data, and the execution of all applications, specifications, oaths, assignments and all other instruments that the Company deems necessary.
(b) Continuing Obligation. [ASSIGNEE] further agrees to execute, when it is in [ASSIGNEE HIS-HER] power to do so, any such instrument or papers shall continue after the termination of this Agreement.
(c) Attorney in Fact. In the event the Company is unable, after reasonable effort, to obtain [ASSIGNEE]'s signature to secure the Company's rights in the Inventions or other related intellectual property rights, then [ASSIGNEE] hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as [ASSIGNEE HIS-HER] agent and attorney in fact, to act for and in [ASSIGNEE] behalf to execute and file any such applications and to do all otherlawfully permitted acts to further the prosecution and issuance of letters patent or copyright registrations thereon with the same legal force and effect as if executed by [ASSIGNEE].
5.2 Confidential Information.
(a) Company Information. [ASSIGNEE] agrees to maintain the strict confidentiality of all Confidential Information during the term of this Agreement and thereafter.
(b) Former Employer Information. [ASSIGNEE] agrees that [ASSIGNEE] will not, during [ASSIGNEE HIS-HER] employment with the Company, improperly use or disclose any proprietary information or trade secrets of any former or concurrent employer or other person or entity and that [ASSIGNEE] will not bring onto the premises of the Company any unpublished document or proprietary information belonging to any such employer, person or entity unless consented to in writing by such employer, person or entity.
(c) Third Party Information. [ASSIGNEE] recognizes that the Company has received and in the future will receive from third parties their confidential or proprietary information subject to a duty on the Company's part to maintain the confidentiality of such information and to use it only for certain limited purposes. [ASSIGNEE] agrees to hold all such confidential or proprietary information in the strictest confidence and not to disclose it to any person, firm or corporation or to use it except as necessary in carrying out [ASSIGNEE HIS-HER] work for the Company consistent with the Company's agreement with such third party.
5.3 Returning Company Documents
(a) Obligation to Return Documents. [ASSIGNEE] agrees that, at the time of leaving the employ of the Company, [ASSIGNEE] will deliver to the Company (and will not keep in their possession, recreate or deliver to anyone else) any and all devices, records, data, notes, reports, proposals, lists, correspondence, specifications, drawings blueprints, sketches, materials, equipment, other documents or property, or reproductions of any aforementioned items developed by me pursuant to [ASSIGNEE HIS-HER] employment with the Company or otherwise belonging to the Company, its successors or assigns.
(b) Termination Certification. In the event of the termination of [ASSIGNEE HIS-HER] employment, [ASSIGNEE] agrees to sign and deliver the "Termination Certification" attached hereto as Exhibit C.
5.4 Conflicting Employment. [ASSIGNEE] agrees that, during the term of [ASSIGNEE HIS-HER] employment with the Company, [ASSIGNEE] will not engage in any other employment, occupation, consulting or other business activity directly related to the business in which the Company is now involved or becomes involved during the term ofmy employment, nor will [ASSIGNEE] engage in any other activities that conflict with [ASSIGNEE HIS-HER] obligations to the Company.
5.5 Solicitation of Employees. [ASSIGNEE] agrees that for a [RESTRICTED PERIOD] immediately following the termination of [ASSIGNEE HIS-HER] relationship with the Company for any reason, whether with or without cause, [ASSIGNEE] shall not either directly or indirectly solicit, induce, recruit or encourage any of the Company's employees to leave their employment, or take away such employees, or attempt to solicit, induce, recruit, encourage or take away employees of the Company, either for myself or for any other person or entity.
6.1 Injunctive Relief. The Parties acknowledge and agree that monetary damages would not be a sufficient remedy for any breach of this Agreement and that the Disclosing Party will be entitled to seek injunctive or other equitable relief to remedy any such breach or threatened breach by the Receiving Party.
6.2 Remedies Cumulative. Such remedy will not be deemed to be the exclusive remedy for any breach of this Agreement, but will be in addition to all other rights and remedies available at law or in equity.
7. General Provisions
7.1 Amendment. This Agreement may be amended only in writing, signed by the Parties.
7.2 Notices. All notices permitted or required under this Agreement will be in writing and will be delivered in person or mailed by first class, registered or certified mail, postage prepaid, to the address of the Party specified in this Agreement or such other address as either Party may specify in writing. Such notice will be deemed to have been given upon receipt.
7.3 Assignment. This Agreement cannot be assigned by either Party without the prior written consent of the other Party.
7.4 Governing Law. This Agreement will be governed by and construed in accordance with the laws of [GOVERNING LAW STATE], without regard to its conflict of laws rules.
7.5 No Waiver of Rights. A failure or delay in exercising any right, power or privilege in respect of this Agreement will not be presumed to operate as a waiver, and a single or partial exercise of any right, power or privilege will not be presumed to preclude any subsequent or further exercise, of that right, power or privilege or the exercise of any other right, power or privilege.
7.6 Entire Agreement. This Agreement constitutes the entire agreement between the Parties, and supersedes all prior agreements, representations and understandings of the Parties, written or oral.
7.7 Counterparts. This Agreement may be executed in counterparts, each of which will be deemed an original, but all of which, taken together, will constitute one and the same agreement.
7.8 Severability. In the event a court of law finds any provision of this Agreement void and unenforceable, the remaining provisions shall remain in full force and effect.
IN WITNESS WHEREOF, [ASSIGNEE] executes this Agreement as of the date written below.
LIST OF PRIOR INVENTIONS AND ORIGINAL WORKS OF AUTHORSHIP
Identifying Number & Brief Description
[INSERT APPLICABLE STATE LAW]
This is to certify that I do not have in my possession, nor have I failed to return, any devices, records, data, notes, reports, proposals, lists, correspondence, specifications, drawings, blueprints, sketches, materials, equipment, other documents or property, or reproductions of any aforementioned items belonging to [COMPANY], its subsidiaries, affiliates, successors or assigns (together, the "Company").
I further certify that I have complied with all the terms of the Company's Employment Confidential Information and Invention Assignment Agreement signed by me, including the reporting of any inventions and original works of authorship (as defined therein), conceived or made by me (solely or jointly with others) covered by that agreement.
I further agree that, in compliance with the Employment, Confidential Information and Invention Assignment Agreement, I will preserve as confidential all trade secrets, confidential knowledge, data or other proprietary information relating to products, processes, know-how, designs, formulas, developmental or experimental work, computer programs, data bases, other original works of authorship, customer lists, business plans, financial information or other subject matter pertaining to any business of the Company or any of its employees, clients, consultants or licensees.
I further agree that for twelve (12) months from this date, I will not solicit, induce, recruit or encourage any of the Company's employees to leave their employment.
CONFLICT OF INTEREST GUIDELINES
It is the policy of [COMPANY] to conduct its affairs in strict compliance with the letter and spirit of the law and to adhere to the highest principles of business ethics. Accordingly, all officers, employees and independent contractors must avoid activities which are in conflict, or give the appearance of being in conflict, with these principles and with the interests of the Company. The following are potentially compromising situations which must be avoided. Any exceptions must be reported to the President and written approval for continuation must be obtained.
1. Revealing confidential information to outsiders or misusing confidential information. Unauthorized divulging of information is a violation of this policy whether or not for personal gain and whether or not harm to the Company is intended. (The Employment, Confidential Information and Invention Assignment Agreement elaborates on this principle and is a binding agreement.)
2. Accepting or offering substantial gifts, excessive entertainment, favors or payments which may be deemed to constitute undue influence or otherwise be improper or embarrassing to the Company.
3. Participating in civic or professional organizations that might involve divulging confidential information of the Company.
4. Initiating or approving personnel actions affecting reward or punishment of employees or applicants where there is a family relationship or is or appears to be a personal or social involvement (other than as officers of the Company appointed by the Board of Directors).
5. Initiating or approving any form of personal or social harassment of employees.
6. Investing or holding outside directorship in suppliers, customers, or competing companies, including financial speculations, where such investment or directorship might influence in any manner a decision or course of action of the Company.
7. Borrowing from or lending to employees, customers or suppliers.
8. Acquiring real estate of interest to the Company.
9. Improperly using or disclosing to the Company any proprietary information or trade secrets of any former or concurrent employer or other person or entity with whom obligations of confidentiality exist.
10. Unlawfully discussing prices, costs, customers, sales or markets with competing companies or their employees.
11. Making any unlawful agreement with distributors with respect to prices.
12. Improperly using or authorizing the use of any inventions which are the subject of patent claims of any other person or entity.
13. Engaging in any conduct which is not in the best interest of the Company.
Each officer, employee and independent contractor must take every necessary action to ensure compliance with these guidelines and to bring problem areas to the attention of higher management for review. Violations of this conflict of interest policy may result in discharge without warning.