The Proprietary Inventions and Assignment Agreement is essential for companies seeking to protect their intellectual property rights in the United States. This agreement is typically executed at the start of employment or engagement and serves to clearly establish the company's ownership of any inventions, discoveries, or intellectual property created during the course of employment. It addresses the requirements of federal patent and copyright laws, state-specific regulations, and includes provisions for invention disclosure, assignment of rights, and ongoing cooperation in securing intellectual property protection. The agreement is particularly crucial for technology companies and organizations involved in research and development.
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1. Parties: Identification of the employer/company and employee/contractor
2. Background: Context of the agreement and relationship between parties
3. Definitions: Key terms including 'Intellectual Property', 'Inventions', 'Proprietary Information'
4. Assignment of Inventions: Core provisions regarding assignment of inventions created during employment
5. Disclosure Obligations: Employee's obligations to disclose inventions and developments
6. Assistance with IP Protection: Employee's obligations to assist with patent applications and IP protection
7. Confidentiality Obligations: Provisions regarding protection of confidential information
8. Return of Materials: Requirements for returning company materials upon termination
9. Term and Termination: Duration of agreement and termination provisions
1. Non-Competition: Restrictions on competitive activities - only include where permitted by state law and appropriate for role
2. Third Party Information: Handling of third party confidential information - include when employee may have access to third party information
3. Prior Inventions: Exclusion of pre-existing inventions - include when employee has relevant prior inventions
4. Moral Rights Waiver: Waiver of moral rights in copyrightable works - include when dealing with copyright-heavy work
1. Schedule A - Prior Inventions: List of employee's pre-existing inventions excluded from assignment
2. Schedule B - State Law Notices: Required statutory notices (e.g., California Labor Code 2870)
3. Schedule C - Excluded Inventions: List of invention types excluded by applicable state law
4. Schedule D - Certification: Employee certification of compliance and understanding
Proprietary Information
Intellectual Property
Inventions
Works
Prior Inventions
Company Materials
Developments
Trade Secrets
Confidential Information
Work Product
Assigned Inventions
Excluded Inventions
Intellectual Property Rights
Moral Rights
Derivative Works
Company Business
Employment Period
Competitive Business
Third Party Information
Technical Documentation
Know-How
Background Technology
Improvements
Related Rights
Proprietary Rights
Assignment of Rights
Confidentiality
Disclosure Obligations
Cooperation
Intellectual Property Rights
Non-Competition
Non-Solicitation
Ownership of Inventions
Prior Inventions
Return of Materials
Moral Rights
Assistance with IP Protection
Third Party Information
Warranties and Representations
Severability
Governing Law
Survival
Amendment
Waiver
Notice
Entire Agreement
Assignment and Transfer
Term and Termination
Remedies
Indemnification
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