2

If I want to work for an organization, and agree to something along the lines of:

10. Inventions. Except as otherwise provided in any prior written agreement(s) between the
Employee and ACME, Employee hereby acknowledges and agrees that all designs, improvements,
inventions, and discoveries (collectively “Inventions”) relating to the type of tasks Employee performed
while employed with ACME that have originated or will originate in connection with Employee’s work
for ACME, meaning those Inventions that are created during Employee’s working hours for ACME,
or that are developed using ACME’s facilities, materials, or other resources, that refer to, are suggested
by, or are the result of any work Employee may do during Employee’s employment with ACME, that
arise from any information obtained from ACME or any affiliate of ACME, and/or that are directly
related to Employee’s work for ACME, shall be the exclusive property of ACME and that all such
Inventions shall be considered “works made for hire” belonging to ACME.
To the extent that any such Inventions, under applicable law, may not be considered a work for hire by
Employee for ACME, Employee hereby agrees to assign and, upon its creation, automatically and
irrevocably assign to ACME, without any further consideration, all rights, title and interest in and to
such Inventions. ACME shall have the exclusive right to use the Inventions, whether original or
derivative, for all purposes without additional compensation to Employee. Per written agreement by and
between ACME and Employee, ACME, at its option, may elect to share royalties accruing to
ACME resulting from Employee’s efforts as described herein.
As to all Inventions, Employee will assist ACME in every proper way (but at ACME’s expense) to
obtain and from time to time enforce patents, copyrights, trademarks, trade secrets, and other proprietary
rights and protections related to said Inventions in all countries, and to that end will execute all documents
for use in applying for and obtaining such patents, copyrights, trademarks, trade secrets and other
proprietary rights and protections on and enforcing such Inventions, as ACME may desire, together
with any assignments thereof to ACME or persons designated by it. Employee hereby agrees not to
challenge or seek to register, directly or indirectly the ownership rights of ACME or its designee(s) in
the Inventions.
Attached hereto as Exhibit A is a list and summary of all patents, copyrights or other registrations issued
on inventions made by Employee before entering ACME’s employ, all pending applications filed on
such inventions, and all such inventions for which no patents have been obtained or applications filed.
Employee warrants that Exhibit A is a complete list of such patents, copyrights, other registrations, and
inventions. All such patents, copyrights, other registrations, and inventions so listed on Exhibit A are
excluded from the operation of this Agreement, and if no such list is attached, Employee warrants that no
such patents, copyrights, other registrations or inventions exist.

1- Would I be able to successfully defend independent inventions in the future? By that I mean inventions which are product of my own time and effort? Do you think with due diligence I can successfully keep company work separate from my own inventions? I am not out to short change anyone, and want to make sure no one will try to do that to me; that is all.

2- How would I handle this situation? That is, I come up with an idea, and spend my own time in reducing it to practice, and document the process and steps. Definitely talk to a patent attorney as soon as I come up with it, right?

3- Why is this organization asking for current ideas? Can I ask them to sign an NDA before I share my ideas with them? Who is to say they won't apply for a patent for the same thing given that U.S. law is based on first-to-file?

4- I am not sure if you are familiar with this technology; it is the most prevalent one I can come up with. Can an attorney challenge a potential invention based on use of a common publicly available technology such as Internet Protocol? Can they argue that Mr. X could not have learned as much about IP if it was not for their work at Company Y?

5- Can they make the same argument for experience, insight, or even awareness of the problem to which an inventor provided a solution to?

6- What are the best practices, procedures, and items a potential inventor should observe in order to safely register an invention to their name?

7- Is there any reason for IT professionals who work on jobs dealing with Commercial Off-the-shelf software and hardware to be mandated to sign an invention content like the one above? I mean, are organization being plain greedy or is there a reason for this? If I am not going to be paid for an R&D effort, why should I agree to such a content? Is there a justified reason for this type of content?

8- I hope this post is not considered too many questions. This is such an interesting and complex legal issue, and over the last few years has become so much more competitive.

9- How can I fairly and accurately describe the work products I provide to my employer in the form of designs, strategies, solution, and even software at the level of scripts, and open source code implementations towards completing a service. But leave my hands open to use any publicly documented protocols and specifications in the future? Law is so complex. I saw a video on patent law, and in it, the person stated patent is granted to any product which has all the attributes one describes on their application. This leads me to believe that I safely use protocols such as IP for other products. Is this correct?

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Browse other questions tagged or ask your own question.