Proprietary Inventions And Assignment Agreement for the United States

Proprietary Inventions And Assignment Agreement Template for United States

A Proprietary Inventions and Assignment Agreement is a legally binding document used in the United States to establish ownership rights over intellectual property created during employment or engagement. It ensures that inventions, discoveries, and intellectual property developed by employees or contractors in the course of their work are properly assigned to the company. The agreement complies with federal patent and copyright laws, as well as state-specific employment and intellectual property regulations.

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What is a Proprietary Inventions And Assignment Agreement?

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.

What sections should be included in a Proprietary Inventions And Assignment Agreement?

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

What sections are optional to include in a Proprietary Inventions And Assignment Agreement?

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

What schedules should be included in a Proprietary Inventions And Assignment Agreement?

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

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

United States

Publisher

Genie AI

Cost

Free to use
Industries

Patent Act: 35 U.S.C. - Federal legislation governing patent rights, crucial for determining ownership and assignment of patentable inventions

Copyright Act: 17 U.S.C. - Federal law governing copyright protection and ownership, particularly relevant for 'work for hire' provisions

Defend Trade Secrets Act: Federal law providing uniform protection for trade secrets, including remedies for misappropriation

National Labor Relations Act: Federal law protecting employees' rights in the context of employment agreements and invention assignments

State Trade Secret Laws: State-specific regulations protecting confidential business information and trade secrets

State Employment Laws: State-specific regulations governing employment relationships and workplace rights

State Contract Laws: State-specific rules governing contract formation, enforcement, and interpretation

State Non-Compete Restrictions: State-specific limitations on non-compete agreements and their enforceability

California Labor Code Section 2870: Example of state-specific law limiting employer rights to employee inventions created outside scope of employment

Shop Rights Doctrine: Common law principle giving employers non-exclusive rights to use employees' inventions created using employer resources

Work for Hire Doctrine: Legal concept under copyright law determining ownership of works created during employment

First Amendment: Constitutional protection potentially affecting confidentiality and non-disclosure provisions

Patent and Copyright Clause: Article I, Section 8, Clause 8 of Constitution - Constitutional basis for patent and copyright protection

Stanford v. Roche: Key Supreme Court case establishing importance of precise assignment language in invention agreements

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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