I've Signed a Pre-Invention Assignment. Who owns my future inventions?

[CarpalTunnel]

What is the name of your state (only U.S. law)? Texas

I have a question regarding the reach of a Pre-Invention assignment. I have just signed the following agreement which I will quote here in part:

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.

I work for a small retail vitamin shoppe as a general sales clerk. We sell thousands of supplements from various companies. Think GNC or Vitamin Shoppe. According to the above agreement, if I make a new supplement on my own time or after my employment ends does the Company still own my invention? My thoughts are that they don't because I'm not using any employer resources other than handing out various vitamins that are certainly not the IP of the employer in the first place. Am I correct in this line of thinking?

Also, as an example, if I worked at Walmart, and invented a better coffee maker, Walmart doesn't own the invention merely because they sell coffee makers. Correct? Even under the above agreement?

Thanks for any help with this,

CarpalTunnel

 

[quincy]

What is the name of your state (only U.S. law)? Texas

I have a question regarding the reach of a Pre-Invention assignment. I have just signed the following agreement which I will quote here in part: ...

... I work for a small retail vitamin shoppe as a general sales clerk. We sell thousands of supplements from various companies. Think GNC or Vitamin Shoppe. According to the above agreement, if I make a new supplement on my own time or after my employment ends does the Company still own my invention? My thoughts are that they don't because I'm not using any employer resources other than handing out various vitamins that are certainly not the IP of the employer in the first place. Am I correct in this line of thinking?

Also, as an example, if I worked at Walmart, and invented a better coffee maker, Walmart doesn't own the invention merely because they sell coffee makers. Correct? Even under the above agreement?

Thanks for any help with this,

CarpalTunnel

Because your signature legally binds you to the terms of the agreement, it would have been smart to have had an IP attorney personally review the assignment of rights with you prior to your signing of it. You should, however, do that now. We cannot do personal reviews of, or analyze and offer legal opinions on, the terms of contracts. That goes beyond the scope of this forum.

It is not unusual for an inventor to assign their inventions to others. Inventors often prefer to exchange their rights in their inventions for money up-front or for royalties, because it can be expensive to develop and manufacture and market an invention on your own. These assignment-of-rights agreements are also not uncommon in employer-employee settings. The agreements are often signed by employees as attachments to their employment contracts.

An assignment like the one you signed can cover all inventions created by the employee, both during the course of the employee's employ when creating and inventing is part of the job duties, and during "off time" when the employee is using employer tools, the tools of which can include any special knowledge gained by the employee during his employment.

If you invent something now or you leave your job now, and your invention has absolutely nothing to do with your employer or your employment, you probably will not have a problem defending rights to these inventions should they be challenged. But you should have a personal review of the assignment of rights done by an IP attorney in your area to get a better idea of exactly what rights you have transferred with your signature.

Here is a link to US Code §118 Filing by other than inventor: https://www.law.cornell.edu/uscode/text/35/118