Employees Invention Assignment and Confidentiality Agreement

Saptaparni Raha
Sep 21, 2022
3 min read

Written by Saptaparni Raha, Lawyer

Introduction:

An invention assignment agreement contract provides the employer certain rights to inventions created by the employee during the employment relations. In this agreement, employees disclose such invention information to the employer to assign ownership rights of those inventions to the employer.

Importance of signing an Employee's Invention Assignment:

This agreement is very important for the employees who do creative, engineering, design, or development work. The employer may ask the employees to sign this agreement.
This agreement helps the employer to get ownership rights in inventions and the intellectual property that employees develop during their employment.
This agreement also provides confidentiality for those inventions so that any third party cannot access them.

Important Clauses of Employees Invention Assignment and Confidentiality Agreement:

The first clause is the Title Clause which discloses the employer and the employee entering into this agreement. The enforcement date of the agreement should also be mentioned.
The second clause is the purpose of the agreement, which mentions that the employee understands that it is critical for the company to preserve and protect the rights of inventions and their confidentiality.
The Disclosure of Inventions Clause asks the employee to disclose to the company all inventions, improvements, designs, original work of authorship, etc.
In the clause of Work for Hire, the employee acknowledges and agrees that all copyrightable work is prepared by him within the scope of his employment.
In the Assignment for the Invention Clause, the employee agrees that all innovations are developed using equipment, supplies, and facilities of the company.
In the Assignment of Rights Clause, the employee agrees to irrevocably transfer and assign all patents, patent applications, and copyrights to the company.
In the Assistance Clauses, the employee agrees to assist the company in every proper way.
In the Confidentiality Information Clause, the employee acknowledges that his employment creates confidence and trust for the company. Therefore, any information that may be delivered to him by the company should be treated as confidential.
In a Confidential Clause, the employee, during the employment and even after the termination, will hold all such confidential information in strict confidence and trust.
In a No Breach of Agreement Clause, the employee accepts the company's employment offer and performance of all the terms of this agreement. The employee should not breach any invention assignment under this clause.
In a non-compete Agreement, the employee acknowledges and agrees that the goodwill associated with any customer or account of the company belongs exclusively to the company.
In the Clause of Non-Solicitation of Employees, the employee acknowledges the importance of business carried on by the company.
In the Notification Clause, the employee authorizes the company to notify his actual or future employers of the terms of this agreement.
The employee agrees that he understands that in the event of a breach of this agreement by him, the company would suffer irreparable injury, and he will be entitled to enforce this agreement.
The Jurisdiction Clause mentions that the agreement would be governed by state law.

Conclusion:

This agreement may ask the employee to list down all the inventions created by him before working at the company. The employee's invention agreement prevents the employee from later claiming rights to any inventions that are not on the list.

References:

Lisa Guerin. Should you sign an Invention Assignment Agreement? retrieved from Should You Sign an Inventions Assignment Agreement? | Nolo
Employee Inventions Assignment Agreement, retrieved from, https://www.sec.gov/Archives/edgar/data/1425287/000121390017005564/f8k051917ex10v_workhorse.htm