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Assignment of Inventions in Employment Contract for Software Development


Big corporation in the UK, Intellectual Property and a ContractHow should a contract for Agile software development differ from a contract for Waterfall software development?Attorney In Fact clause — what does it imply?Limitations of software development & scrapingIP clause contractCan a contract remain in effect after it is terminated?Job Contract Copyright WaiverDoes section 2870 of the California Labor Code apply if my employer has headquarters in California but I do not work there?Inventions Assignment Agreement in CaliforniaRevoking my right to defend my Intellectual Property by using Let's Encrypt













0















I have a contract that basically says this in the Assignment section:




To the fullest extent under applicable law, the
Company shall own all right, title and interest in and to all
Inventions (including all Intellectual Property Rights therein
or related thereto) that are made, conceived or reduced to
practice, in whole or in part, by me during the term of my
employment with the Company and which arise out of any
use of Company’s facilities or assets or any research or other
activity conducted by, for or under the direction of the
Company (whether or not (i) conducted at the Company’s
facilities, (ii) during working hours or (iii) using Company
assets
), or which are useful with or relate directly or
indirectly to any “ Company Interest” (meaning any product,
service, other Invention or Intellectual Property Right that is
sold, leased, used, proposed, under consideration or under
development by the Company). I will promptly disclose and
provide all of the foregoing Inventions (the “ Assigned
Inventions”) to the Company. I hereby make and agree to
make all assignments to the Company necessary to
effectuate and accomplish the foregoing ownership.
Assigned Inventions shall not include any Invention that is
both (a) developed entirely on my own time, without use of
any Company facilities, assets, ideas or direction and (b) not
useful with or related to any Company Interest
.



...If I wish to clarify that something created
by me prior to my employment, which relates or may relate
to the Company’s actual or proposed business, is not within
the scope of the assignment of Inventions under this
Agreement, then I have listed it on Appendix A . If (i) I use
or disclose any Restricted Materials (including anything
listed in Appendix A) when acting within the scope of my
employment (or otherwise on behalf of the Company), or
(ii) any Assigned Invention cannot be fully made, used,
reproduced, sold, distributed, or otherwise exploited without
using, misappropriating or violating any Restricted
Materials, I hereby grant and agree to grant to the Company
a perpetual, irrevocable, worldwide, royalty-free,
non-exclusive, transferable, sublicensable right and license
to use, disclose, exploit and exercise all rights in such
Restricted Materials, including any Intellectual Property
Rights therein.




And Assurances:




...I hereby
irrevocably designate and appoint the Company and its
officers as my agents and attorneys-in-fact
, coupled with an
interest, to act for and on my behalf to execute and file any
document and to perform all other lawfully permitted acts to
further the purposes of the foregoing with the same legal
force and effect as if executed by me.




I have a couple questions.



I have inventions which I don't want to disclose, which I have documented by creating different versions and timestamping them. However, I plan on continuing to develop them on my own time as I work at a company. They are software related.



First, the first two highlighted parts seem to contradict each other. The first says whether or not during working hours, the second says it's fine if it's on my own time. Wondering if this is a problem for the contract. Also wondering how valid those statements actually are.



Second, they like most other companies want me to list my prior inventions. But I've asked this before to a lawyer and they said I can't simply list a title of a project such as "Photoshop-like image editor", I have to actually go into detail and describe it. And not just a few sentences, but paragraphs of detail. Not so much detail as to be like a patent in its thoroughness, but more detail than a few paragraphs PER INVENTION. But this is a security leak as I don't want to disclose my inventions even if they are simple, it's a matter of privacy. So the question is what I can do or what the reality is of the situation.



And last thing is, let's say this company, a software company, is in the field of Sales and Marketing. This means they have a robust application or suite of applications, practices, and tools like CRMs, machine learning stuff, APIs, etc. They also use lots of open source programming tools. Meanwhile, let's say my inventions are in the field of Programming Tools and Application tools. It's not directly related to Sales and Marketing, but it's related pretty closely to CRMs and machine learning tools, and APIs. It's not related to their specific APIs, but it's related to APIs let's say. The question is how the line is drawn on what is considered competitive inventions. If I were to invent a new machine learning algorithm while working as a marketer or sales person at a software company, if that is considered competitive and prohibited by the contract.



Oh, and "not useful with or related to any Company Interest" is very vague. The company could be interested in literally anything these days.









share







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    0















    I have a contract that basically says this in the Assignment section:




    To the fullest extent under applicable law, the
    Company shall own all right, title and interest in and to all
    Inventions (including all Intellectual Property Rights therein
    or related thereto) that are made, conceived or reduced to
    practice, in whole or in part, by me during the term of my
    employment with the Company and which arise out of any
    use of Company’s facilities or assets or any research or other
    activity conducted by, for or under the direction of the
    Company (whether or not (i) conducted at the Company’s
    facilities, (ii) during working hours or (iii) using Company
    assets
    ), or which are useful with or relate directly or
    indirectly to any “ Company Interest” (meaning any product,
    service, other Invention or Intellectual Property Right that is
    sold, leased, used, proposed, under consideration or under
    development by the Company). I will promptly disclose and
    provide all of the foregoing Inventions (the “ Assigned
    Inventions”) to the Company. I hereby make and agree to
    make all assignments to the Company necessary to
    effectuate and accomplish the foregoing ownership.
    Assigned Inventions shall not include any Invention that is
    both (a) developed entirely on my own time, without use of
    any Company facilities, assets, ideas or direction and (b) not
    useful with or related to any Company Interest
    .



    ...If I wish to clarify that something created
    by me prior to my employment, which relates or may relate
    to the Company’s actual or proposed business, is not within
    the scope of the assignment of Inventions under this
    Agreement, then I have listed it on Appendix A . If (i) I use
    or disclose any Restricted Materials (including anything
    listed in Appendix A) when acting within the scope of my
    employment (or otherwise on behalf of the Company), or
    (ii) any Assigned Invention cannot be fully made, used,
    reproduced, sold, distributed, or otherwise exploited without
    using, misappropriating or violating any Restricted
    Materials, I hereby grant and agree to grant to the Company
    a perpetual, irrevocable, worldwide, royalty-free,
    non-exclusive, transferable, sublicensable right and license
    to use, disclose, exploit and exercise all rights in such
    Restricted Materials, including any Intellectual Property
    Rights therein.




    And Assurances:




    ...I hereby
    irrevocably designate and appoint the Company and its
    officers as my agents and attorneys-in-fact
    , coupled with an
    interest, to act for and on my behalf to execute and file any
    document and to perform all other lawfully permitted acts to
    further the purposes of the foregoing with the same legal
    force and effect as if executed by me.




    I have a couple questions.



    I have inventions which I don't want to disclose, which I have documented by creating different versions and timestamping them. However, I plan on continuing to develop them on my own time as I work at a company. They are software related.



    First, the first two highlighted parts seem to contradict each other. The first says whether or not during working hours, the second says it's fine if it's on my own time. Wondering if this is a problem for the contract. Also wondering how valid those statements actually are.



    Second, they like most other companies want me to list my prior inventions. But I've asked this before to a lawyer and they said I can't simply list a title of a project such as "Photoshop-like image editor", I have to actually go into detail and describe it. And not just a few sentences, but paragraphs of detail. Not so much detail as to be like a patent in its thoroughness, but more detail than a few paragraphs PER INVENTION. But this is a security leak as I don't want to disclose my inventions even if they are simple, it's a matter of privacy. So the question is what I can do or what the reality is of the situation.



    And last thing is, let's say this company, a software company, is in the field of Sales and Marketing. This means they have a robust application or suite of applications, practices, and tools like CRMs, machine learning stuff, APIs, etc. They also use lots of open source programming tools. Meanwhile, let's say my inventions are in the field of Programming Tools and Application tools. It's not directly related to Sales and Marketing, but it's related pretty closely to CRMs and machine learning tools, and APIs. It's not related to their specific APIs, but it's related to APIs let's say. The question is how the line is drawn on what is considered competitive inventions. If I were to invent a new machine learning algorithm while working as a marketer or sales person at a software company, if that is considered competitive and prohibited by the contract.



    Oh, and "not useful with or related to any Company Interest" is very vague. The company could be interested in literally anything these days.









    share







    New contributor




    user10869858 is a new contributor to this site. Take care in asking for clarification, commenting, and answering.
    Check out our Code of Conduct.






















      0












      0








      0








      I have a contract that basically says this in the Assignment section:




      To the fullest extent under applicable law, the
      Company shall own all right, title and interest in and to all
      Inventions (including all Intellectual Property Rights therein
      or related thereto) that are made, conceived or reduced to
      practice, in whole or in part, by me during the term of my
      employment with the Company and which arise out of any
      use of Company’s facilities or assets or any research or other
      activity conducted by, for or under the direction of the
      Company (whether or not (i) conducted at the Company’s
      facilities, (ii) during working hours or (iii) using Company
      assets
      ), or which are useful with or relate directly or
      indirectly to any “ Company Interest” (meaning any product,
      service, other Invention or Intellectual Property Right that is
      sold, leased, used, proposed, under consideration or under
      development by the Company). I will promptly disclose and
      provide all of the foregoing Inventions (the “ Assigned
      Inventions”) to the Company. I hereby make and agree to
      make all assignments to the Company necessary to
      effectuate and accomplish the foregoing ownership.
      Assigned Inventions shall not include any Invention that is
      both (a) developed entirely on my own time, without use of
      any Company facilities, assets, ideas or direction and (b) not
      useful with or related to any Company Interest
      .



      ...If I wish to clarify that something created
      by me prior to my employment, which relates or may relate
      to the Company’s actual or proposed business, is not within
      the scope of the assignment of Inventions under this
      Agreement, then I have listed it on Appendix A . If (i) I use
      or disclose any Restricted Materials (including anything
      listed in Appendix A) when acting within the scope of my
      employment (or otherwise on behalf of the Company), or
      (ii) any Assigned Invention cannot be fully made, used,
      reproduced, sold, distributed, or otherwise exploited without
      using, misappropriating or violating any Restricted
      Materials, I hereby grant and agree to grant to the Company
      a perpetual, irrevocable, worldwide, royalty-free,
      non-exclusive, transferable, sublicensable right and license
      to use, disclose, exploit and exercise all rights in such
      Restricted Materials, including any Intellectual Property
      Rights therein.




      And Assurances:




      ...I hereby
      irrevocably designate and appoint the Company and its
      officers as my agents and attorneys-in-fact
      , coupled with an
      interest, to act for and on my behalf to execute and file any
      document and to perform all other lawfully permitted acts to
      further the purposes of the foregoing with the same legal
      force and effect as if executed by me.




      I have a couple questions.



      I have inventions which I don't want to disclose, which I have documented by creating different versions and timestamping them. However, I plan on continuing to develop them on my own time as I work at a company. They are software related.



      First, the first two highlighted parts seem to contradict each other. The first says whether or not during working hours, the second says it's fine if it's on my own time. Wondering if this is a problem for the contract. Also wondering how valid those statements actually are.



      Second, they like most other companies want me to list my prior inventions. But I've asked this before to a lawyer and they said I can't simply list a title of a project such as "Photoshop-like image editor", I have to actually go into detail and describe it. And not just a few sentences, but paragraphs of detail. Not so much detail as to be like a patent in its thoroughness, but more detail than a few paragraphs PER INVENTION. But this is a security leak as I don't want to disclose my inventions even if they are simple, it's a matter of privacy. So the question is what I can do or what the reality is of the situation.



      And last thing is, let's say this company, a software company, is in the field of Sales and Marketing. This means they have a robust application or suite of applications, practices, and tools like CRMs, machine learning stuff, APIs, etc. They also use lots of open source programming tools. Meanwhile, let's say my inventions are in the field of Programming Tools and Application tools. It's not directly related to Sales and Marketing, but it's related pretty closely to CRMs and machine learning tools, and APIs. It's not related to their specific APIs, but it's related to APIs let's say. The question is how the line is drawn on what is considered competitive inventions. If I were to invent a new machine learning algorithm while working as a marketer or sales person at a software company, if that is considered competitive and prohibited by the contract.



      Oh, and "not useful with or related to any Company Interest" is very vague. The company could be interested in literally anything these days.









      share







      New contributor




      user10869858 is a new contributor to this site. Take care in asking for clarification, commenting, and answering.
      Check out our Code of Conduct.












      I have a contract that basically says this in the Assignment section:




      To the fullest extent under applicable law, the
      Company shall own all right, title and interest in and to all
      Inventions (including all Intellectual Property Rights therein
      or related thereto) that are made, conceived or reduced to
      practice, in whole or in part, by me during the term of my
      employment with the Company and which arise out of any
      use of Company’s facilities or assets or any research or other
      activity conducted by, for or under the direction of the
      Company (whether or not (i) conducted at the Company’s
      facilities, (ii) during working hours or (iii) using Company
      assets
      ), or which are useful with or relate directly or
      indirectly to any “ Company Interest” (meaning any product,
      service, other Invention or Intellectual Property Right that is
      sold, leased, used, proposed, under consideration or under
      development by the Company). I will promptly disclose and
      provide all of the foregoing Inventions (the “ Assigned
      Inventions”) to the Company. I hereby make and agree to
      make all assignments to the Company necessary to
      effectuate and accomplish the foregoing ownership.
      Assigned Inventions shall not include any Invention that is
      both (a) developed entirely on my own time, without use of
      any Company facilities, assets, ideas or direction and (b) not
      useful with or related to any Company Interest
      .



      ...If I wish to clarify that something created
      by me prior to my employment, which relates or may relate
      to the Company’s actual or proposed business, is not within
      the scope of the assignment of Inventions under this
      Agreement, then I have listed it on Appendix A . If (i) I use
      or disclose any Restricted Materials (including anything
      listed in Appendix A) when acting within the scope of my
      employment (or otherwise on behalf of the Company), or
      (ii) any Assigned Invention cannot be fully made, used,
      reproduced, sold, distributed, or otherwise exploited without
      using, misappropriating or violating any Restricted
      Materials, I hereby grant and agree to grant to the Company
      a perpetual, irrevocable, worldwide, royalty-free,
      non-exclusive, transferable, sublicensable right and license
      to use, disclose, exploit and exercise all rights in such
      Restricted Materials, including any Intellectual Property
      Rights therein.




      And Assurances:




      ...I hereby
      irrevocably designate and appoint the Company and its
      officers as my agents and attorneys-in-fact
      , coupled with an
      interest, to act for and on my behalf to execute and file any
      document and to perform all other lawfully permitted acts to
      further the purposes of the foregoing with the same legal
      force and effect as if executed by me.




      I have a couple questions.



      I have inventions which I don't want to disclose, which I have documented by creating different versions and timestamping them. However, I plan on continuing to develop them on my own time as I work at a company. They are software related.



      First, the first two highlighted parts seem to contradict each other. The first says whether or not during working hours, the second says it's fine if it's on my own time. Wondering if this is a problem for the contract. Also wondering how valid those statements actually are.



      Second, they like most other companies want me to list my prior inventions. But I've asked this before to a lawyer and they said I can't simply list a title of a project such as "Photoshop-like image editor", I have to actually go into detail and describe it. And not just a few sentences, but paragraphs of detail. Not so much detail as to be like a patent in its thoroughness, but more detail than a few paragraphs PER INVENTION. But this is a security leak as I don't want to disclose my inventions even if they are simple, it's a matter of privacy. So the question is what I can do or what the reality is of the situation.



      And last thing is, let's say this company, a software company, is in the field of Sales and Marketing. This means they have a robust application or suite of applications, practices, and tools like CRMs, machine learning stuff, APIs, etc. They also use lots of open source programming tools. Meanwhile, let's say my inventions are in the field of Programming Tools and Application tools. It's not directly related to Sales and Marketing, but it's related pretty closely to CRMs and machine learning tools, and APIs. It's not related to their specific APIs, but it's related to APIs let's say. The question is how the line is drawn on what is considered competitive inventions. If I were to invent a new machine learning algorithm while working as a marketer or sales person at a software company, if that is considered competitive and prohibited by the contract.



      Oh, and "not useful with or related to any Company Interest" is very vague. The company could be interested in literally anything these days.







      contract-law contract software business





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      user10869858 is a new contributor to this site. Take care in asking for clarification, commenting, and answering.
      Check out our Code of Conduct.










      share







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      user10869858 is a new contributor to this site. Take care in asking for clarification, commenting, and answering.
      Check out our Code of Conduct.








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      user10869858user10869858

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      New contributor





      user10869858 is a new contributor to this site. Take care in asking for clarification, commenting, and answering.
      Check out our Code of Conduct.






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      Check out our Code of Conduct.




















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