Employee Invention Assignment Agreement

EMPLOYEE INVENTION ASSIGNMENT AGREEMENT

THIS EMPLOYEE INVENTION ASSIGNMENT AGREEMENT (this "Agreement") is entered into as of [__/__/____] (the "Effective Date"),

by and between:

EMPLOYER:
Name: [________________________________]
Address: [________________________________]
City/State/ZIP: [________________________________]
State of Organization: [____]
(hereinafter referred to as the "Company")

and

EMPLOYEE:
Name: [________________________________]
Address: [________________________________]
City/State/ZIP: [________________________________]
(hereinafter referred to as "Employee")

Company and Employee are each referred to individually as a "Party" and collectively as the "Parties."

RECITALS

WHEREAS, the Company is engaged in the business of [________________________________] (the "Business"), including research, development, design, manufacturing, marketing, or licensing of [________________________________];

WHEREAS, Employee is or will be employed by the Company in the position of [________________________________], and Employee's duties may involve conceiving, developing, creating, or contributing to inventions, discoveries, works of authorship, software, designs, and other intellectual property;

WHEREAS, the Company has invested and will continue to invest substantial resources in research, development, equipment, facilities, and training that support the creation of intellectual property;

WHEREAS, the Company has a legitimate interest in owning the intellectual property created by its employees in connection with Company business, using Company resources, or relating to the Company's actual or anticipated business;

WHEREAS, certain states have enacted statutes that limit the scope of invention assignment agreements, and this Agreement is intended to comply with all applicable state and federal law; and

WHEREAS, Employee has had the opportunity to consult with independent legal counsel before signing this Agreement.

NOW, THEREFORE, in consideration of Employee's employment (or continued employment) with the Company, the compensation paid to Employee, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:

ARTICLE 1 — DEFINITIONS

1.1 "Company Invention" means any Invention that:

(a) Is conceived, developed, created, reduced to practice, or made (in whole or in part) by Employee, alone or with others, during the period of Employee's employment with the Company; AND

(b) Satisfies at least one of the following criteria:

(i) Relates to the Company's current business or to the Company's actual or demonstrably anticipated research or development;

(ii) Results from any work performed by Employee for the Company or at the Company's direction;

(iii) Is developed using the Company's equipment, supplies, facilities, or Confidential Information; or

(iv) Is developed on Company time (i.e., during working hours or while Employee is being compensated by the Company).

IMPORTANT: This definition is drafted to comply with state inventor protection statutes (see Article 6). In states with such statutes, an Invention that does not satisfy any of the criteria in subsection (b) is an Excluded Invention and may not be assigned to the Company, even if conceived during the employment period.

1.2 "Invention" means any invention, discovery, concept, idea, innovation, improvement, development, process, method, technique, formula, algorithm, software program (including source code and object code), application, device, apparatus, design, trade secret, composition, work of authorship (including literary works, artistic works, graphic works, photographs, audiovisual works, and compilations), mask work, trademark, service mark, domain name, database, or any other form of intellectual property, whether or not patentable, copyrightable, or protectable under any other intellectual property regime.

1.3 "Excluded Invention" means any Invention that:

(a) Was conceived, developed, and reduced to practice entirely on Employee's own time;

(b) Was made without the use of any Company equipment, supplies, facilities, or Confidential Information;

(c) Does not relate to the Company's business or to the Company's actual or demonstrably anticipated research or development; and

(d) Does not result from any work performed by Employee for the Company.

STATE LAW NOTE: In states with employee invention protection statutes (CA, DE, IL, KS, MN, NC, WA, UT, NV — see Article 6), Excluded Inventions cannot be assigned to the Company regardless of any agreement to the contrary. The Company acknowledges that this Agreement does not require assignment of any Excluded Invention.

1.4 "Prior Invention" means any Invention that was conceived, developed, or reduced to practice by Employee (alone or with others) before the commencement of Employee's employment with the Company and that Employee desires to exclude from the scope of this Agreement, as listed on Exhibit A (Prior Inventions Disclosure Schedule).

1.5 "Confidential Information" means any non-public, proprietary, or trade secret information of the Company, including but not limited to: technical data, trade secrets, research and development plans, product plans, customer lists, business strategies, financial information, personnel information, and any other information that derives independent economic value from not being generally known.

1.6 "Moral Rights" means any rights of paternity, integrity, disclosure, withdrawal, or any other rights that may be known as or referred to as "moral rights," "artist's rights," "droit moral," or similar rights recognized under the law of any jurisdiction.

ARTICLE 2 — ASSIGNMENT OF INVENTIONS

2.1 Assignment. Employee hereby irrevocably assigns, transfers, and conveys to the Company all of Employee's right, title, and interest in and to all Company Inventions, including:

(a) All patent rights (including the right to file patent applications, prosecute patents, and enjoy the benefits of any patents issued thereon), worldwide;

(b) All copyrights and rights under copyright law, including the right of reproduction, distribution, public performance, public display, and the preparation of derivative works;

(c) All trade secret rights;

(d) All trademark and service mark rights arising from or associated with Company Inventions;

(e) All mask work rights;

(f) All rights to sue for past, present, and future infringement or misappropriation; and

(g) All other intellectual property rights of any kind, in all countries of the world, for the full duration of such rights.

2.2 Future Assignment. To the extent any Company Invention is not assignable at the time of conception or creation (because it has not yet been reduced to practice, for example), Employee agrees to assign such Company Invention to the Company promptly upon its creation, reduction to practice, or fixation in a tangible medium.

2.3 Automatic Assignment. To the maximum extent permitted by applicable law, all Company Inventions shall be automatically assigned to the Company upon creation, without further action by either Party. If any Company Invention is not automatically assigned, Employee agrees to execute any documents and take any actions necessary to effectuate the assignment.

ARTICLE 3 — WORKS MADE FOR HIRE

3.1 Work Made for Hire Designation. To the extent permitted by law, all works of authorship (including software, documentation, designs, and creative works) that constitute Company Inventions shall be considered "works made for hire" within the meaning of 17 U.S.C. § 101 of the United States Copyright Act, with the Company as the author and owner of all copyrights from the moment of creation.

3.2 Supplemental Assignment. To the extent that any work of authorship that constitutes a Company Invention is determined by a court or other authority not to be a "work made for hire," Employee hereby irrevocably assigns to the Company all copyright rights in such work, including all rights of reproduction, distribution, public performance, public display, and the creation of derivative works, in all media now known or hereafter devised, worldwide, for the full term of copyright protection.

PRACTITIONER NOTE — WORK MADE FOR HIRE:
Under 17 U.S.C. § 101, a "work made for hire" is either: (1) a work prepared by an employee within the scope of employment; or (2) a work specially ordered or commissioned for use as one of nine enumerated categories (contribution to a collective work, part of a motion picture, translation, supplementary work, compilation, instructional text, test, answer material, or atlas), if the parties expressly agree in a signed writing.

Works created by employees within the scope of employment are automatically works made for hire. However, for independent contractors, the work must fall into one of the nine statutory categories and the parties must have a written agreement. This Agreement covers employees; for contractors, use a separate independent contractor IP assignment agreement.

ARTICLE 4 — MORAL RIGHTS WAIVER

4.1 Waiver of Moral Rights. To the fullest extent permitted by applicable law, Employee hereby irrevocably waives, and agrees never to assert, any and all Moral Rights that Employee may have in or with respect to any Company Invention, including:

(a) The right of attribution or paternity (the right to be identified as the author);

(b) The right of integrity (the right to object to modifications);

(c) The right of disclosure (the right to control first publication);

(d) The right of withdrawal (the right to withdraw the work from circulation); and

(e) Any similar rights under the law of any jurisdiction worldwide.

4.2 Limitation. To the extent that Moral Rights cannot be waived under applicable law (as in certain civil law jurisdictions), Employee agrees not to exercise such rights in a manner that would interfere with the Company's use, modification, or commercialization of Company Inventions.

4.3 Consent. Employee consents to any action by the Company or its licensees, successors, or assigns that would otherwise violate Employee's Moral Rights, including modification, distortion, or mutilation of any work, and use of the work without attribution to Employee.

ARTICLE 5 — DISCLOSURE AND COOPERATION

5.1 Prompt Disclosure. Employee shall promptly and fully disclose to the Company, in writing, all Inventions conceived, developed, or reduced to practice by Employee (alone or with others) during the period of Employee's employment. This disclosure obligation applies to all Inventions, whether or not they constitute Company Inventions, so that the Company may determine whether they fall within the scope of this Agreement.

NOTE: The disclosure obligation applies to ALL Inventions (including potential Excluded Inventions) solely for the purpose of allowing the Company to determine ownership. Disclosure of an Excluded Invention does not constitute assignment of that Invention.

5.2 Records. Employee shall maintain accurate written records of all Inventions made during employment, including notebooks, sketches, drawings, prototypes, and electronic files, and shall make such records available to the Company upon request.

5.3 Cooperation with Patent and IP Prosecution. Employee agrees to cooperate fully with the Company in the preparation, filing, prosecution, and maintenance of patent applications and other intellectual property registrations relating to Company Inventions, both during and after employment. Such cooperation shall include, without limitation:

(a) Executing patent applications, assignments, declarations, oaths, and all other documents reasonably necessary to file, prosecute, and maintain patents, copyrights, and other intellectual property registrations;

(b) Providing testimony, declarations, and evidence in support of patent prosecution, interference proceedings, reexamination proceedings, opposition proceedings, and litigation;

(c) Assisting with responses to office actions and other communications from patent offices worldwide; and

(d) Providing technical information and explanations to attorneys and patent agents.

5.4 Power of Attorney. If the Company is unable, after reasonable effort, to secure Employee's cooperation or signature on any document needed to apply for, prosecute, obtain, or enforce any patent, copyright, or other intellectual property right relating to a Company Invention (whether because of Employee's unavailability, mental or physical incapacity, refusal, or any other reason), Employee hereby irrevocably designates and appoints the Company (and each of its duly authorized officers and agents) as Employee's agent and attorney-in-fact, to act for and on Employee's behalf to execute, verify, and file any such documents and to do all other lawfully permitted acts to further the purposes of this Agreement with the same legal force and effect as if executed by Employee. This power of attorney is coupled with an interest and is irrevocable.

5.5 Compensation for Post-Employment Cooperation. If Employee's cooperation under Section 5.3 is required after termination of employment, the Company shall reimburse Employee for reasonable out-of-pocket expenses and compensate Employee at a rate of $[____] per hour (or Employee's final hourly rate, whichever is greater) for time spent on such cooperation.

ARTICLE 6 — STATE INVENTOR PROTECTION STATUTES

6.1 Statutory Compliance. This Agreement is subject to, and shall not be construed to override, the following state inventor protection statutes (and any similar statutes enacted in other states). The assignment obligations in Article 2 DO NOT apply to any Invention that qualifies as an Excluded Invention under applicable state law:

California — Labor Code § 2870

NOTICE TO EMPLOYEE (REQUIRED BY CA LAB. CODE § 2872): This Agreement does not apply to an invention that qualifies fully under the provisions of Section 2870 of the California Labor Code, which provides:

"(a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either:
(1) Relate at the time of conception or reduction to practice of the invention to the employer's business, or actual or demonstrably anticipated research or development of the employer; or
(2) Result from any work performed by the employee for the employer.
Any provision which purports to apply to an invention described above is to that extent against the public policy of this state and is unenforceable."

Delaware — Title 19, § 805

NOTICE: This Agreement does not apply to any invention that qualifies under Delaware Code Title 19, § 805. An employee shall retain all right, title, and interest in an invention that is developed entirely on the employee's own time without using the employer's equipment, supplies, facilities, or trade secret information, unless the invention: (a) relates to the employer's business or actual or demonstrably anticipated research or development; or (b) results from work performed by the employee for the employer.

Illinois — 765 ILCS 1060/2 (Employee Patent Act)

NOTICE: This Agreement does not apply to any invention that qualifies under the Illinois Employee Patent Act (765 ILCS 1060/2). An employer may not require an employee to assign rights in an invention made entirely on the employee's own time without using the employer's equipment, supplies, facilities, or trade secret information, unless the invention: (a) relates to the employer's business or to the employer's actual or demonstrably anticipated research or development; or (b) results from any work performed by the employee for the employer.

Kansas — K.S.A. § 44-130

NOTICE: This Agreement does not apply to any invention that qualifies under Kansas Statutes § 44-130. Any provision requiring assignment shall not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless: (a) the invention relates to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (b) the invention results from any work performed by the employee for the employer.

Minnesota — Statutes § 181.78

NOTICE: This Agreement does not apply to any invention that qualifies under Minnesota Statutes § 181.78. A provision in an employment agreement providing that an employee must assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, and: (a) does not relate directly to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or (b) does not result from any work performed by the employee for the employer.

North Carolina — General Statutes § 66-57.1

NOTICE: This Agreement does not apply to any invention that qualifies under North Carolina General Statutes § 66-57.1. Any provision in an employment agreement which provides that the employee shall assign or offer to assign any of his rights in an invention to his employer shall not apply to an invention that the employee developed entirely on his own time without using the employer's equipment, supplies, facility, or trade secret information, except for those inventions that: (a) relate to the employer's business or actual or demonstrably anticipated research or development; or (b) result from any work performed by the employee for the employer.

Washington — Revised Code § 49.44.140

NOTICE: This Agreement does not apply to any invention that qualifies under Washington Revised Code § 49.44.140. A provision in an employment agreement which provides that an employee shall assign or offer to assign rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless: (a) the invention relates directly to the business of the employer, or to the employer's actual or demonstrably anticipated research or development; or (b) the invention results from any work performed by the employee for the employer.

Utah — Code § 34-39-2 (Employment Inventions Act)

NOTICE: Under the Utah Employment Inventions Act (Utah Code § 34-39-2 et seq.), an employment agreement may not require an employee to assign to the employer any right to an invention if the invention is created entirely on the employee's own time and is not: (a) an employment invention (i.e., conceived, developed, reduced to practice, or created by the employee within the scope of employment, on the employer's time, or with the aid of employer equipment, materials, facilities, or information); or (b) directly related to the employer's business.

Nevada — Revised Statutes § 600.500

NOTICE: Under Nevada Revised Statutes § 600.500, an employer may not require an employee to assign any of the employee's rights in an invention that is developed entirely on the employee's own time without using the employer's equipment, supplies, facilities, or trade secret information, unless the invention relates to the business of the employer or results from work performed by the employee for the employer.

6.2 Employee Acknowledgment. Employee acknowledges having reviewed the applicable state inventor protection notices above and understands that this Agreement does not require assignment of any Excluded Invention.

ARTICLE 7 — PRIOR INVENTIONS

7.1 Disclosure of Prior Inventions. Employee has disclosed on Exhibit A (Prior Inventions Disclosure Schedule) attached hereto all Prior Inventions that Employee desires to exclude from the scope of this Agreement. If Exhibit A is not completed or is marked "None," Employee represents that there are no Prior Inventions to disclose.

7.2 Non-Assignment of Prior Inventions. The Company acknowledges that Prior Inventions listed on Exhibit A are not assigned to the Company under this Agreement and remain the property of Employee.

7.3 License to Use Prior Inventions. If Employee incorporates any Prior Invention (or any intellectual property owned by Employee or in which Employee has an interest) into any Company product, service, project, or Company Invention, Employee hereby grants the Company a perpetual, irrevocable, non-exclusive, royalty-free, fully paid-up, worldwide license (with the right to sublicense through multiple tiers) to use, reproduce, modify, distribute, display, perform, and create derivative works of such Prior Invention as part of or in connection with the Company's products, services, and business.

7.4 No Incorporation Without Consent. Employee shall not incorporate any Prior Invention or any third-party intellectual property into any Company Invention or Company work product without the Company's prior written consent.

ARTICLE 8 — SHOP RIGHTS

PRACTITIONER NOTE — SHOP RIGHTS DOCTRINE:
Under the common law "shop rights" doctrine (recognized in most U.S. jurisdictions), if an employee creates an invention using the employer's resources, time, or facilities, the employer may acquire an implied, non-exclusive, royalty-free license to use the invention, even without a written assignment agreement. Shop rights do not transfer ownership; they grant only a license.

This Agreement is intended to provide broader protection than shop rights by requiring actual assignment of Company Inventions. However, to the extent that any Company Invention is determined not to be assignable under this Agreement (e.g., because it qualifies as an Excluded Invention under state law but was made using Company resources), the Company reserves all shop rights in such Invention.

8.1 Reservation of Shop Rights. Without limiting the assignment obligations in Article 2, the Company expressly reserves all common law shop rights in any Invention conceived, developed, or reduced to practice by Employee using the Company's equipment, supplies, facilities, time, or resources, to the extent such Invention is not otherwise assigned to the Company under this Agreement.

ARTICLE 9 — CONFIDENTIALITY AND TRADE SECRETS

9.1 Protection of Confidential Information. Employee agrees to maintain the confidentiality of all Company Inventions and Confidential Information in accordance with any separate confidentiality agreement between the Parties, the Defend Trade Secrets Act (18 U.S.C. § 1836), and applicable state trade secret law.

9.2 DTSA Whistleblower Immunity Notice. Pursuant to 18 U.S.C. § 1833(b):

NOTICE: An individual may not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that: (A) is made (i) in confidence to a federal, state, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of law; or (B) is made in a complaint or other document filed under seal in a lawsuit or other proceeding. An individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the employer's trade secrets to the attorney and use the trade secret information in the court proceeding if the individual: (A) files any document containing the trade secret under seal; and (B) does not disclose the trade secret, except pursuant to court order.

ARTICLE 10 — REMEDIES

10.1 Injunctive Relief. Employee acknowledges that a breach of this Agreement would cause the Company irreparable harm that cannot be adequately compensated by monetary damages. The Company shall be entitled to seek temporary, preliminary, and permanent injunctive relief, without the necessity of proving actual damages or posting a bond (to the extent permitted by applicable law).

10.2 Monetary Damages. The Company shall be entitled to recover all actual damages caused by Employee's breach, including the value of misappropriated intellectual property, lost profits, and costs of recreating or replacing the intellectual property.

10.3 Attorneys' Fees. The prevailing Party in any action to enforce this Agreement shall be entitled to recover reasonable attorneys' fees and costs.

10.4 Equitable Relief. In addition to injunctive relief and damages, the Company may seek a constructive trust, accounting, or other equitable relief over any Invention or intellectual property that should have been assigned under this Agreement.

ARTICLE 11 — TERM AND SURVIVAL

11.1 Term. This Agreement shall be effective as of the Effective Date and shall continue throughout Employee's employment with the Company.

11.2 Survival. The following obligations survive termination of employment for any reason:

(a) The assignment of Company Inventions conceived during employment (Article 2);

(b) The work-made-for-hire designation (Article 3);

(c) The moral rights waiver (Article 4);

(d) The cooperation and power-of-attorney obligations (Article 5);

(e) The license granted regarding Prior Inventions (Section 7.3);

(f) Confidentiality obligations (Article 9); and

(g) All remedies provisions (Article 10).

11.3 Post-Employment Inventions. Any Invention conceived or reduced to practice by Employee within [____] months (recommended: 6 to 12 months) after termination of employment shall be presumed to be a Company Invention if it relates to the Company's business or to work Employee performed for the Company, unless Employee can demonstrate by clear and convincing evidence that the Invention was conceived and developed entirely after termination without use of Confidential Information.

DRAFTER'S NOTE: Post-employment invention clauses are enforceable in many states but may be challenged as unreasonable if the period is too long. A 6-to-12-month period is generally considered reasonable. This provision shifts the burden of proof to the employee.

ARTICLE 12 — GENERAL PROVISIONS

12.1 Governing Law. This Agreement shall be governed by the laws of the State of [________________________________], without regard to conflict-of-laws principles.

12.2 Forum Selection. Any dispute arising under this Agreement shall be resolved in the state or federal courts located in [________________________________].

12.3 Entire Agreement. This Agreement constitutes the entire agreement between the Parties with respect to the assignment of inventions and intellectual property and supersedes all prior agreements and understandings on the subject. This Agreement does not supersede any separate employment agreement, confidentiality agreement, or non-compete/non-solicitation agreement.

12.4 Severability. If any provision of this Agreement is found to be unenforceable, the remaining provisions shall continue in full force and effect.

12.5 Amendment. This Agreement may be amended only by a written instrument signed by both Parties.

12.6 Waiver. No failure to enforce any provision shall constitute a waiver.

12.7 Assignment. The Company may assign this Agreement to any successor, affiliate, or acquirer. Employee may not assign this Agreement.

12.8 Notices. All notices shall be in writing and delivered to the addresses set forth above.

12.9 Counterparts and Electronic Signatures. This Agreement may be executed in counterparts. Electronic signatures are valid and binding.

SIGNATURES

IN WITNESS WHEREOF, the Parties have executed this Employee Invention Assignment Agreement as of the Effective Date.

COMPANY:

EMPLOYEE:

EMPLOYEE ACKNOWLEDGMENT:

☐ I have read this Agreement in its entirety.
☐ I have had the opportunity to consult with independent legal counsel.
☐ I have reviewed the state inventor protection notices in Article 6.
☐ I have completed and attached Exhibit A (Prior Inventions Disclosure Schedule).
☐ I understand that Company Inventions will be owned by the Company.
☐ I understand that Excluded Inventions (as defined by applicable state law) are NOT assigned to the Company.
☐ I enter into this Agreement voluntarily.

EXHIBIT A — PRIOR INVENTIONS DISCLOSURE SCHEDULE

Employee discloses the following Prior Inventions conceived, developed, or reduced to practice before the commencement of employment with the Company:

☐ No Prior Inventions. Employee represents that Employee has no Prior Inventions to disclose.

☐ Additional pages attached. Employee has attached [____] additional pages listing Prior Inventions.

Employee Signature: _______________________________
Date: [__/__/____]

EXHIBIT B — STATE INVENTOR PROTECTION STATUTE REFERENCE CHART

Sources and References

• 35 U.S.C. § 261 (Patent Assignment) — Cornell LII
• 17 U.S.C. § 101 (Work Made for Hire Definition) — Cornell LII
• 17 U.S.C. § 201(b) (Ownership of Copyright in Works Made for Hire) — Cornell LII
• California Labor Code § 2870-2872 — CA Legislative Information
• Delaware Code tit. 19, § 805 — DE Legislature
• Illinois Employee Patent Act (765 ILCS 1060/) — IL General Assembly
• Kansas Statutes § 44-130 — KS Legislature
• Minnesota Statutes § 181.78 — MN Legislature
• North Carolina General Statutes § 66-57.1 — NC Legislature
• Washington Revised Code § 49.44.140 — WA Legislature
• Utah Employment Inventions Act (Utah Code § 34-39-2) — UT Legislature
• Defend Trade Secrets Act, 18 U.S.C. § 1836 — Cornell LII
• DTSA Whistleblower Immunity, 18 U.S.C. § 1833(b) — Cornell LII
• National Law Review, "Invention Assignment Agreements: How to Avoid Common Pitfalls" — natlawreview.com

This template is provided for informational purposes only and does not constitute legal advice. Invention assignment obligations and employee inventor protections vary by state and federal law. This document must be reviewed and customized by a qualified attorney licensed in the relevant jurisdiction before use. Do not rely on this template without current professional legal review.

Prepared for use on ezel.ai — a legal template platform for solo and small-firm practitioners.