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Hi all,
I'm just about to sign my employment contract with my new employer, I was keen to have a contract that stated something along the lines of - I agree to offer them any employment invention created outside the workplace (at home, for example) to obtain legally as their IP in exchange for a profit share agreement, otherwise they relinquish any rights to that invention.
The reason for this being I work in apps and make a lot of stuff in my spare time, I've heard stories of companies trying to take money because the employee was under their employment when the invention (app) was made.
They were happy to agree to this and we agreed this arrangement by way of gentleman's agreement. However the Intellectual Property section appears to me as though it basically says I relinquish all my rights to any invention I make, will make or have made before the employment started. Which is not what we agreed upon, I was hoping someone could look at this for me and help me understand some of this legal jargon. Basically does this say I hand over all my Intellectual Property rights no questions asked?
I'm just about to sign my employment contract with my new employer, I was keen to have a contract that stated something along the lines of - I agree to offer them any employment invention created outside the workplace (at home, for example) to obtain legally as their IP in exchange for a profit share agreement, otherwise they relinquish any rights to that invention.
The reason for this being I work in apps and make a lot of stuff in my spare time, I've heard stories of companies trying to take money because the employee was under their employment when the invention (app) was made.
They were happy to agree to this and we agreed this arrangement by way of gentleman's agreement. However the Intellectual Property section appears to me as though it basically says I relinquish all my rights to any invention I make, will make or have made before the employment started. Which is not what we agreed upon, I was hoping someone could look at this for me and help me understand some of this legal jargon. Basically does this say I hand over all my Intellectual Property rights no questions asked?
"Intellectual property" means all interest and title in and rights to improvements, inventions, processes, systems, designs, production practices, software code, patents, copyrights, trademarks, design rights, technical information and know-how devised, written, made, suggested or found by you at any time whether or not prior to the date of this agreement and whether solely or jointly and whether or not relating to the business or operations of MYCOMPANY from time to time or any work done by you for MYCOMPANY.
You now assign (subject to s.40 of the Patents Act 1977) to MYCOMPANY all and any interest, title and rights you have or may have in the intellectual property and shall promptly provide such information and assistance (without charge to but at the expense of MYCOMPANY) to obtain, maintain and enforce protection for the intellectual property anywhere in the world including executing any documents necessary to vest in MYCOMPANY all and any rights and title to the intellectual property which it is now agreed shall be and remain the property of MYCOMPANY.
You now assign with full title guarantee all present and future copyright in all your rights, title and interest in and to all material written, created or devised by you relating to the business or operations of MYCOMPANY from time to time or any work done by you for MYCOMPANY and all rights of action for damages for infringement of such copyright.
You now irrevocably and unconditionally waive any and all moral rights under the Copyrights, Designs and Patents Act 1988 in and to any material above.
You now appoint MYCOMPANY as your attorney to act in your name and on your behalf to execute all deeds and documents as may be required above.
The Employee agrees:
You now assign (subject to s.40 of the Patents Act 1977) to MYCOMPANY all and any interest, title and rights you have or may have in the intellectual property and shall promptly provide such information and assistance (without charge to but at the expense of MYCOMPANY) to obtain, maintain and enforce protection for the intellectual property anywhere in the world including executing any documents necessary to vest in MYCOMPANY all and any rights and title to the intellectual property which it is now agreed shall be and remain the property of MYCOMPANY.
You now assign with full title guarantee all present and future copyright in all your rights, title and interest in and to all material written, created or devised by you relating to the business or operations of MYCOMPANY from time to time or any work done by you for MYCOMPANY and all rights of action for damages for infringement of such copyright.
You now irrevocably and unconditionally waive any and all moral rights under the Copyrights, Designs and Patents Act 1988 in and to any material above.
You now appoint MYCOMPANY as your attorney to act in your name and on your behalf to execute all deeds and documents as may be required above.
The Employee agrees:
- to give the Employer full written details of all Employment Inventions which relate to or are capable of being used in the business of the Employer promptly on their creation;
- at the Employer's request and in any event on the termination of his employment to give to the Employer all originals and copies of correspondence, documents, papers and records on all media which record or relate to any of the Employment IPRs;
- to maintain confidentiality of all internal business communication;
- not to develop (further), release or sell (or any other use) any ideas, codes, concepts or any other IPR;
- not to attempt to register any Employment IPR nor patent any Employment Invention unless requested to do so by the Employer; and
- to keep confidential each Employment Invention unless the Employer has consented in writing to its disclosure by the Employee.
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