I have a question regarding the reach of a Pre-Invention assignment. Let's use this one for a hypothetical Texas retailer as an example:
1. Confidential Information. "Confidential Information" means proprietary techniques, methods, practices and/or confidential information that Company has or will develop, compile, create, or improve, or which the Company receives under conditions of confidentiality from its customers, clients and/or other third parties. Confidential Information includes not only information disclosed by the Company (including its employees, agents, independent contractors, and consultants) to Employee in connection with Employee's duties, but also information (including inventions) developed or learned by Employee during the course of his/her employment. Confidential Information is broadly defined and also includes, but is not limited to, employee training, policies, techniques and/or recruitment efforts, trade secrets, financial data, business and marketing strategies, product information, specialized manufacturing techniques, business operations, strategy and plans of the Company and its financial information including revenues, expenses, profits, employee names and positions, customer preferences, vendor/supplier costs and arrangements, and/or other Company trade secrets. It does not include information widely known or which is a matter of public record (unless made public by Employee or any one acting in violation of a legal obligation to keep such information confidential).
5. Assignment of Employee's Inventions. Employee will promptly disclose in writing inventions created by Employee, individually or with others during the course of his/her employment and which relate in any way to the Company's business, customers and/or operations, and/or which were created, in whole or in part using any Company property and/or Confidential Information ("Inventions"). To the fullest extent permitted by law, all Inventions belong to and are the sole property of Company and will be inventions of Company subject to this Agreement. As such, Employee assigns to Company all right, title and interest Employee may have or may acquire in and to all Inventions. Employee shall sign and deliver to Company (during and after employment) any other documents that Company considers desirable to provide evidence of (i) the assignment of all rights of Employee, if any, in any inventions and (ii) Company's ownership of such Inventions. Employee hereby waives any and all moral rights relating to any Inventions. Employee will assist Company in applying for, prosecuting, obtaining or enforcing any patent, copyright or other right or protection relating to any invention, all at Company's expense but without consideration to Employee in excess of Employee's salary or wages. If Company is unable to secure Employee's signature on any document necessary to apply for, prosecute, obtain or enforce any patent, copyright or other right or protection relating to any Invention, Employee hereby irrevocably designates and appoints Company and each of its duly authorized officers and agents as Employee's agent and attorney-in-fact, to act for and in Employee's behalf to execute and file any such document and to do all other lawfully permitted acts to further the prosecuting, issuance and enforcement of patents, copyrights or other rights or protections, with the same force and effect as if executed and delivered by Employee. To avoid any possible confusion, Employee has identified all prior inventions that he/she asserts should not be included under the definition of "Invention" herein. Any invention not so identified, that otherwise meets the criteria set forth herein, will be presumed to be an Invention.
Example 1:
Under the above contract if an employee worked for a vitamin retailer as a general sales clerk and came up with an idea for a new supplement, who owns the new supplement?
I think the employee would own their invention because the retailer doesn't own the IP of the products they sale, the employee wasn't directed to invent anything for the company, the invention wouldn't use any proprietary IP that the company owns. That would be like saying a Walmart employee couldn't own an invention for a new coffee maker because Walmart sales coffee makers. Is my thinking correct here or does the PIA agreement nullify all that because the invention relates to products the company sales?
"Product information" from section 1 seems a bit vague to me. Does this apply to any all products that come through the retailers doors whether or not the company invented them or not?
Quote:
1. Confidential Information. "Confidential Information" means proprietary techniques, methods, practices and/or confidential information that Company has or will develop, compile, create, or improve, or which the Company receives under conditions of confidentiality from its customers, clients and/or other third parties. Confidential Information includes not only information disclosed by the Company (including its employees, agents, independent contractors, and consultants) to Employee in connection with Employee's duties, but also information (including inventions) developed or learned by Employee during the course of his/her employment. Confidential Information is broadly defined and also includes, but is not limited to, employee training, policies, techniques and/or recruitment efforts, trade secrets, financial data, business and marketing strategies, product information, specialized manufacturing techniques, business operations, strategy and plans of the Company and its financial information including revenues, expenses, profits, employee names and positions, customer preferences, vendor/supplier costs and arrangements, and/or other Company trade secrets. It does not include information widely known or which is a matter of public record (unless made public by Employee or any one acting in violation of a legal obligation to keep such information confidential).
Quote:
5. Assignment of Employee's Inventions. Employee will promptly disclose in writing inventions created by Employee, individually or with others during the course of his/her employment and which relate in any way to the Company's business, customers and/or operations, and/or which were created, in whole or in part using any Company property and/or Confidential Information ("Inventions"). To the fullest extent permitted by law, all Inventions belong to and are the sole property of Company and will be inventions of Company subject to this Agreement. As such, Employee assigns to Company all right, title and interest Employee may have or may acquire in and to all Inventions. Employee shall sign and deliver to Company (during and after employment) any other documents that Company considers desirable to provide evidence of (i) the assignment of all rights of Employee, if any, in any inventions and (ii) Company's ownership of such Inventions. Employee hereby waives any and all moral rights relating to any Inventions. Employee will assist Company in applying for, prosecuting, obtaining or enforcing any patent, copyright or other right or protection relating to any invention, all at Company's expense but without consideration to Employee in excess of Employee's salary or wages. If Company is unable to secure Employee's signature on any document necessary to apply for, prosecute, obtain or enforce any patent, copyright or other right or protection relating to any Invention, Employee hereby irrevocably designates and appoints Company and each of its duly authorized officers and agents as Employee's agent and attorney-in-fact, to act for and in Employee's behalf to execute and file any such document and to do all other lawfully permitted acts to further the prosecuting, issuance and enforcement of patents, copyrights or other rights or protections, with the same force and effect as if executed and delivered by Employee. To avoid any possible confusion, Employee has identified all prior inventions that he/she asserts should not be included under the definition of "Invention" herein. Any invention not so identified, that otherwise meets the criteria set forth herein, will be presumed to be an Invention.
Under the above contract if an employee worked for a vitamin retailer as a general sales clerk and came up with an idea for a new supplement, who owns the new supplement?
I think the employee would own their invention because the retailer doesn't own the IP of the products they sale, the employee wasn't directed to invent anything for the company, the invention wouldn't use any proprietary IP that the company owns. That would be like saying a Walmart employee couldn't own an invention for a new coffee maker because Walmart sales coffee makers. Is my thinking correct here or does the PIA agreement nullify all that because the invention relates to products the company sales?
"Product information" from section 1 seems a bit vague to me. Does this apply to any all products that come through the retailers doors whether or not the company invented them or not?
Patents: Who Owns an Invention if You've Signed a Pre-Invention Assignment
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