Generally, an invention is the property of the inventor who conceives, develops, and perfects it. The mere fact of employment alone does not require an employee-inventor to assign a patent to his employer. The rights of an employer, if any, to its employee's inventions and to patents which result from the period of employment are determined primarily from the contract of employment, since it is the terms of the employment contract that determine the relative rights of the parties. No law requires an employee to assign an invention to an employer. However, employers can ensure their ownership through several types of agreement. In an invention-assignment agreement, a company requires an employee to sign over all work-related inventions. (Several states prohibit employers from requiring employees to sign over inventions conceived outside of work, however.) These agreements may be part of an initial employment agreement, or can be made contemporaneously or later. If such an agreement is made after an employee is hired, the employer must offer some "consideration," or valuable benefit other than continued employment, to the employee.
Confidentiality Agreement with regard to Employee Inventions Agreement made on the (date), between (Name of Employee) of (street address, city, state, zip code), referred to herein as Employee, and (Name of Employer), a corporation organized and existing under the laws of the state of ______________, with its principal office located at (street address, city, state, zip code), referred to herein as Employer. Whereas, Employer engages in the business of (type of business); and Whereas, Employee has been employed by Employer to engage in the business of (type of business) as a (position); and Whereas, the parties agree that as part of Employee's job performance, Employer expects Employee to develop inventions, and to produce and receive confidential information pertaining to Employer's business. Now, therefore, for and in consideration of the mutual covenants contained in this Agreement, and other good and valuable consideration, the parties agree as follows: 1. Trade Secrets. During the term of Employee's employment, Employee shall refrain from disclosing to other persons or entities any confidential information or trade secrets of Employer developed by Employee or of which Employee becomes aware. 2. Assignment of Rights to Inventions. During the term of Employee's employment, Employee agrees that any inventions made by Employee with Employer's facilities, equipment, supplies, trade secrets, or that relate to Employer's current or anticipated work or research, or that result from work done for Employer, shall belong to Employer. Employee assigns such inventions to Employer, and agrees to cooperate with Employer in obtaining patents on inventions for Employer. Employee further agrees that Employer may keep such inventions as trade secrets. 3. Disclosure of Invention to Employer A. To facilitate compliance with this Agreement, Employee agrees to disclose to Employer all inventions made by Employee during the course of Employee's employment. Employee agrees that any patent application filed within (period of time) after termination of Employee's employment is presumed to relate to an invention developed during the term of Employee's employment with Employer. Therefore, Employee agrees to disclose to Employer all patent applications filed by Employee within (period of time) after Employee's employment with Employer has terminated. B. An invention is made by Employee during the course of Employee's employment if Employee conceived of, or put into practice, the invention during the term of Employee's employment. 4. Severability. The invalidity of any portion of this Agreement will not and shall not be deemed to affect the validity of any other provision. If any provision of this Agreement is held to be invalid, the parties agree that the remaining provisions shall be deemed to be in
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