Assignment of Inventions Agreement
THIS AGREEMENT made as of of ( the “Employee”). between , of (the “Employer”) and ,
WHEREAS the Employee and the Employer have entered into or are about to enter into an employment relationship for their mutual benefit; AND WHEREAS as a condition of entering into and/or continuing such employment relationship, the Employer has required that the Employee enter into this Agreement; NOW THEREFORE IN CONSIDERATION OF the premises and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties hereby agrees as follows: 1. Definition. Whenever used in this Agreement the following words and phrases shall have the following respective meanings: (a) “Affiliate” shall mean any entity a majority of whose voting shares or securities are owned or controlled directly or indirectly by the Employer or the shareholders of the Employer, or whose control is held by the Employer or the shareholders of the Employer. “Inventions” shall mean any and all inventions, improvements or discoveries made or conceived by the Employee during the term of his or her employment either solely or jointly with others, in the performance of such employment or: (i) with the use of the Employer’s time, equipment, materials, supplies or facilities; or related to or suggested by trade secret information, other private or confidential matters acquired during the term of his or her employment, the business of the Employer or the Employer’s actual or demonstrably anticipated processes or research and development.
(b)
(ii)
2.
Assignment of Inventions. (a) The Employee agrees to disclose promptly and fully and in confidence to the Employer or its nominee, any and all Inventions. Except as expressly provided in subparagraph (c) hereof, the Employee agrees that all Inventions shall be the sole and exclusive property of the Employer or its nominee.
(b)
Page 2 (c) Upon the request of the Employer and in the form and manner prescribed by it, the Employee agrees to assign to the Employer or its nominee, any and all right, title and interest in and to all Inventions, provided, however, that inventions, improvements or discoveries produced entirely in the Employee’s own time and (i) which do not relate A. B. to the business of the Employer or its Affiliates; or to the Employer or its Affiliate’s actual or demonstrably anticipated processes, research or development; or
(ii)
which do not result from any work performed by the Employee for the Employer or its Affiliates;
(d)
shall remain the Employee’s sole and exclusive property and not subject to assignment hereby but are subject to disclosure to the Employer. Upon the request of the Employer, the Employee agrees to assist it and its nominee, at the Employee’s expense, during and after the Employee’s employment in every proper way; (i) to obtain for the Employer, patents for Inventions (other than those expressly excluded pursuant to the terms of subparagraph (c) above) in any and all jurisdictions; and in any controversy or legal proceeding relating to Inventions, improvements or discoveries or to the patents resulting therefrom.
(e)
(ii)
(f)
The Employee agrees not to disclose at any time during or after his or her employment, directly or indirectly, to any unauthorized person without the Employer’s prior written permission, any knowledge not available to the public which the Employee acquires respecting the Employer or its Affiliate’s inventions, designs, methods, systems, improvements, trade secrets, customer information or other private or confidential matters acquired during the term of his or her employment. The Employee agrees that all records, files, drawings, tapes, documents, tools, equipment and the like relating to the business, work or investigations of the Employer or its Affiliates and prepared, used or possessed by the Employee, or under the Employee’s control, during the term of his employment shall be and remain the sole and exclusive property of the Employer and/or its Affiliates, as the case may be.
(g)
Page 3 (h) Prior to leaving employment with the Employer, the Employee agrees to deliver promptly to the Employer all such records, files, drawings, tapes, documents, plans, tools and equipment. The Employee, represents that he or she has no agreement with or obligation to others in conflict with his or her obligations under this Agreement.
(i)
3.
General Provisions. (a) The Employee acknowledges that all restrictions in this Agreement are reasonable in the circumstances and hereby waives all defenses to the enforcement thereof by the Employer. In the event that any provisions of this Agreement shall be deemed void or invalid by a court of competent jurisdiction, the remaining provisions shall be and remain in full force and effect and the Employee hereby confers upon such court the power to replace such void or invalid provisions with such other enforceable and valid provisions as shall be as near as may be to the original in form and effect. The Employee acknowledges that breach by him or her of the terms and conditions of this Agreement may cause irreparable harm to the Employer which may not be compensable by monetary damages. Accordingly, the Employee acknowledges that a breach by it of the terms and conditions of this Agreement shall be sufficient grounds for the granting of an injunction at the suit of the Employer by a court of competent jurisdiction. This Agreement shall be governed by and construed in accordance with the laws of the State of . This Agreement is the entire agreement between the Employee and the Employer relating to the subject matter hereof and stands in the place of any previous agreement, whether oral or in writing. The Employee agrees that no amendment to this Agreement shall be binding upon the parties unless it is in writing and executed by both parties. This Agreement will enure to the benefit of the successors and assigns of the Employer.
(b)
(c)
(d)
(e)
IN WITNESS WHEREOF the parties have executed this Agreement as of the date first above written.
Per: Name:
Page 4 Title:
Witness