Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development. (ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 6 contracts
Samples: Separation Agreement (Onconetix, Inc.), Employment Agreement (Blue Water Vaccines Inc.), Employment Agreement (Blue Water Vaccines Inc.)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all of Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii9(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to termination of Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by meExecutive. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have has for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 5 contracts
Samples: Employment Agreement (Waystar Holding Corp.), Employment Agreement (Waystar Holding Corp.), Employment Agreement (Waystar Holding Corp.)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, Employee will promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company Company, and hereby assigns to the Company, or its designee, all developmentsof Employee’s right, title and interest in and to any original works of authorship, inventionstrademarks, domain names, inventions (including the right to claim priority), concepts, know-how, improvements, trade secretsprocesses, and similar proprietary rightsmethods or Proprietary Information , whether or not patentable or registrable under copyright or similar laws, which Executive laws that Employee may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term period of EmploymentEmployee’s Relationship with the Company, whether or not during regular working hours, provided they either including such intellectual property developed by Employee for the Company prior to the Effective Date (collectively referred to as "Intellectual Property") and that (i) relate at are developed using the time of conception equipment, supplies, facilities or reduction to practice Confidential Information of the invention Company, (ii) result from or are suggested by work performed by Employee for the Company, or (iii) relate to the Company business of any member of or to the Company Group, or actual or demonstrably anticipated research or development of any member the Company. All original works of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) authorship that are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made created by Executive Employee (solely or jointly with others) within the scope of and during the Term period of Employment Employee’s Relationship with the Company and that are “protectable by copyright are "works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, ," as that term is defined in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, United States Copyright Act. Any assignment of copyright hereunder includes all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments paternity, integrity, disclosure and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developmentswithdrawal, and any intellectual property other rights that may be known as or referred to as “moral rights” (collectively, “Moral Rights”). To the extent such Moral Rights cannot be assigned under applicable law and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as aboveextent the following is allowed by the laws in the various countries where Moral Rights exist, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive Employee hereby waives such Moral Rights and irrevocably quitclaims consents to any action of Company that would violate such Moral Rights in the Company any and all claims, absence of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Companysuch consent.
Appears in 5 contracts
Samples: Employment Agreement (Hydrofarm Holdings Group, Inc.), Employment Agreement (Hydrofarm Holdings Group, Inc.), Employment Agreement (Hydrofarm Holdings Group, Inc.)
Assignment of Intellectual Property. (i) Executive agrees that Executive willThe Employee hereby assigns to the Company or its designees, without additional compensationfurther consideration and free and clear of any lien or encumbrance, promptly make full written disclosure the Employee’s entire right, title and interest (within the United States and all foreign jurisdictions) in and to the Companyany and all inventions, and will hold in trust for the sole right and benefit of the Company all discoveries, improvements, developments, original works of authorship, inventions, concepts, know-ideas, plans, specifications, mask work rights, know how, improvementssoftware, trade secretsformulas, and similar proprietary databases, designees, designations, sui generis data base rights, whether or not patentable or registrable under copyright or similar lawsindustrial work rights, which Executive may (or have previously) solely or jointly conceive or develop or reduce processes and contributions to practiceConfidential Information created, or cause to be conceived or conceived, developed or reduced to practice, practice by the Employee (alone or with others) during the Term of Employment, whether or not during regular working hours, provided they either Employee’s employment with the Company which (i) relate at the time of conception or reduction to practice of the invention are related to the business of any member of Company’s current or anticipated business, activities, products, or services, unless disclosed by the Employee and confirmed by the Company Groupas not representing a conflict, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed by Employee for any member of the Company Group; regardless of whether created, conceived, developed or (iii) are developed through reduced to practice with or without the use of equipmentCompany property, suppliesincluding any and all Intellectual Property Rights (as defined below) therein (“Work Product”). Any Work Product which falls within the definition of “work made for hire”, as such term is defined in the U.S. Copyright Act, shall be considered a “work made for hire”, the copyright in which vests initially and exclusively in the Company. The Employee waives any rights to be attributed as the author or facilities producer of any member Work Product, including all rights of the Company Grouppaternity, integrity, disclosure and withdrawal and any other rights that may be known as or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developmentsmoral rights,” “artist’s rights,” “droit moral,” or the like (collectively “Moral Rights”). Executive further acknowledges To the extent Employee retains any such Moral Rights in Work Product under applicable law, Employee hereby ratifies and consents to any action that may be taken with respect to such Moral Rights by or authorized by Company and agrees not to assert any Moral Rights with respect thereto. Employee will confirm any such ratifications, consents and agreements from time to time as requested by Company. The Employee agrees to immediately disclose to the Company all Developments made Work Product created, conceived, reduced to practice, or otherwise developed by Executive (the Employee, solely or jointly with others) within the scope jointly. For purposes of and during the Term of Employment are this Agreement, “works made for hireIntellectual Property” (to the greatest extent permitted by applicable law) for which Executive isshall mean any patent, in partcopyright, compensated by Executive’s Base Salarytrademark or service mxxx, unless regulated otherwise by lawtrade secret, but that, in the event or any such Development is deemed other proprietary rights protection legally available. The decision whether or not to be a work made for hire, Executive hereby assigns to the Company, commercialize or its designee, all Executive’s right, title, and interest throughout the world in and to market any such Development.
(ii) Executive agrees to assist the Company, or its designee, at Work Product is within the Company’s expense, in every way to secure sole discretion and for the rights Company’s sole benefit and the Employee will not claim any consideration as a result of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company Company’s commercialization of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyWork Product.
Appears in 4 contracts
Samples: Employment Agreement (Prometheum, Inc.), Employment Agreement (Prometheum, Inc.), Employment Agreement (Prometheum, Inc.)
Assignment of Intellectual Property. (ia) Executive Employee agrees that Executive willto and hereby does grant and assign to the Company any interest in and all rights and title to (including, without additional compensationlimitation, promptly make full written disclosure rights to the Companypatents, copyrights and will hold in trust for the sole right all other proprietary interests) any and benefit of the Company all developmentsinventions, original works of authorship, inventionsdevelopments, concepts, know-how, improvements, designs, discoveries, software, source code, object code, creations, developments, ideas, or trade secretssecrets that Employee (either alone or with others) makes, and similar proprietary rightscreates, conceives, invents, discovers, develops, or reduces to practice during the Employment Period under the Employment Agreement that (i) relates to the business of the Company or the Company’s actual or demonstrably anticipated research or development, (ii) results from any work Employee performed for the Company, or (iii) results from the use of the Company’s time, equipment, supplies, facilities, property, trade secrets or other Confidential Information (“Intellectual Property”). Any such assignment of Intellectual Property shall occur regardless whether or not it is patentable or registrable under copyright or similar lawsstatutes or subject to analogous protection. Any such assignment shall be without additional compensation to Employee. Employee acknowledges that he has and shall have no intellectual property or other right, which Executive title or interest in or to any such Intellectual Property. Employee will promptly disclose and deliver such Intellectual Property to the Company and, at the request of and without charge to the Company, Employee will do all things deemed by the Company to be reasonably necessary to perfect title to the Intellectual Property in the Company and to assist in obtaining for the Company such patents, copyrights or other protection as may (or have previously) solely or jointly conceive or develop or reduce to practicebe provided under law and desired by the Company, including, without limitation, executing and signing any and all relevant applications, assignments, or cause other instruments. Employee further agrees to provide, at the Company’s request, declarations and affidavits and to give testimony, in depositions, hearings, or trials, in support of any of the Company’s rights hereunder. These obligations continue even after any termination of the employment relationship. In the event the Company is unable, after reasonable effort, to secure Employee’s signature on any document or documents needed to apply for or prosecute any patent, copyright or other right or protection, for any reason whatsoever, Employee hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as his agent and attorney-in-fact to act for and on his behalf to execute and file any such application or other document and to do all other lawfully permitted acts to further the prosecution and issuance of patents, copyrights, or similar protections thereon with the same legal force and effect as if executed by his.
(b) Employee acknowledges that all original works of authorship, including, without limitation, software, manuals and documentation, that have been or may be conceived or developed or reduced created by Employee during and within the scope of employment are and shall be “works-for-hire” and the sole property of the Company.
(c) Notwithstanding any provision of this Agreement, Employee understands and agrees that Employee is not being required to practiceassign, during and will not be deemed to have assigned, the Term of Employment, whether or not during regular working hours, provided they either following:
(i) any inventions that the Employee developed entirely on his own time without using the Company’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 business of any member of the Company GroupCompany’s business, or actual or demonstrably anticipated research or development of any member of the Company GroupCompany; or (ii2) result from or relate to any work performed by the Employee for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the CompanyInventions, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments developments and any copyrightsintangible interests and properties (i.e., patents, trademarkspatent applications, service marksintellectual property, database rightscopyrights, domain names, mask work rights, moral rightstrade secrets, and other intellectual property rights relating thereto trademarks) that Employee made prior to starting employment with the Company. To avoid any uncertainty, Employee agrees to set forth as an Exhibit to this Agreement, any inventions, developments and intangible interests that he owns or has an interest in any and all countries, including at the disclosure to the Company time of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyAgreement.
Appears in 3 contracts
Samples: Employment Agreement (Ag&e Holdings Inc.), Merger Agreement (Ag&e Holdings Inc.), Nondisclosure, Intellectual Property, Noncompetition and Nonsolicitation Agreement (Ag&e Holdings Inc.)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to assign and hereby assigns to the CompanyCompany (the “Assignment”) any and all rights, improvements and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, conceptscopyrightable or patentable subject matter, know-how, improvementsand other intellectual property relating to the Company’s business (or any of its subsidiaries’ businesses) which Executive conceived or developed, or may conceive or develop, either alone or with others, or which otherwise arose or may arise during Executive’s employment with the Company and for a period of eighteen (18) months thereafter (“Assignable Property”). For the avoidance of doubt, the Assignable Property does not apply to an invention for which no equipment, supplies, facility or trade secretssecret information of the Company was used and which was developed entirely on the Executive’s own time, and similar proprietary rights, whether or (1) which does not patentable or registrable under copyright or similar laws, which Executive may relate (or have previouslya) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention directly to the business of any member of the Company Group, employer or (b) to the employer’s actual or demonstrably anticipated research or development development, or (2) which does not result from any work performed by the Executive for the Company. Executive shall promptly disclose to the Company all Assignable Property. Executive agrees not to assert any rights against the Company (or any of its subsidiaries) or seek compensation from the Company (or any member of its subsidiaries) for the foregoing Assignment or the Company’s (or any of its subsidiaries) use of Assignable Property. Executive shall promptly disclose to the Company all knowledge that Executive has or obtains regarding Assignable Property and, at the request of the Company, Executive shall, without expense or additional compensation, provide the Company Groupwith whatever assistance that the Company may request of Executive including, but not limited to: (i) signing documents to further evidence and perfect an Assignment; (ii) result from obtaining for the Company patents, trademarks and trademark protection, copyrights and copyright protection, assignment of rights, and protection of trade secrets; and (iii) taking any other action the Company deems appropriate for securing or relate to any work performed for any member protecting its rights in Assignable Property or other intellectual property of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Developmentsubsidiaries.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 3 contracts
Samples: Employment Agreement (Famous Daves of America Inc), Employment Agreement (Famous Daves of America Inc), Employment Agreement (Famous Daves of America Inc)
Assignment of Intellectual Property. (ia) Executive Employee agrees that Executive willto and hereby does grant and assign to the Company any interest in and all rights and title to (including, without additional compensationlimitation, promptly make full written disclosure rights to the Companypatents, copyrights and will hold in trust for the sole right all other proprietary interests) any and benefit of the Company all developmentsinventions, original works of authorship, inventionsdevelopments, concepts, know-how, improvements, designs, discoveries, software, source code, object code, creations, developments, ideas, or trade secretssecrets that Employee (either alone or with others) makes, and similar proprietary rightscreates, conceives, invents, discovers, develops, or reduces to practice during the Employment Period under the Employment Agreement of time that (i) relates to the business of the Company or the Company’s actual or demonstrably anticipated research or development, (ii) results from any work Employee performed for the Company, or (iii) results from the use of the Company’s time, equipment, supplies, facilities, property, trade secrets or other Confidential Information (“Intellectual Property”). Any such assignment of Intellectual Property shall occur regardless whether or not it is patentable or registrable under copyright or similar lawsstatutes or subject to analogous protection. Any such assignment shall be without additional compensation to Employee. Employee acknowledges that he has and shall have no intellectual property or other right, which Executive title or interest in or to any such Intellectual Property. Employee will promptly disclose and deliver such Intellectual Property to the Company and, at the request of and without charge to the Company, Employee will do all things deemed by the Company to be reasonably necessary to perfect title to the Intellectual Property in the Company and to assist in obtaining for the Company such patents, copyrights or other protection as may (or have previously) solely or jointly conceive or develop or reduce to practicebe provided under law and desired by the Company, including, without limitation, executing and signing any and all relevant applications, assignments, or cause other instruments. Employee further agrees to provide, at the Company’s request, declarations and affidavits and to give testimony, in depositions, hearings, or trials, in support of any of Company’s rights hereunder. These obligations continue even after any termination of the employment relationship. In the event the Company is unable, after reasonable effort, to secure Employee’s signature on any document or documents needed to apply for or prosecute any patent, copyright or other right or protection, for any reason whatsoever, Employee hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as his agent and attorney-in-fact to act for and on his behalf to execute and file any such application or other document and to do all other lawfully permitted acts to further the prosecution and issuance of patents, copyrights, or similar protections thereon with the same legal force and effect as if executed by his.
(b) Employee acknowledges that all original works of authorship, including, without limitation, software, manuals and documentation, that have been or may be conceived or developed or reduced created by Employee during and within the scope of employment are and shall be “works-for-hire” and the sole property of the Company.
(c) Notwithstanding any provision of this Agreement, Employee understands and agrees that Employee is not being required to practiceassign, during and will not be deemed to have assigned, the Term of Employment, whether or not during regular working hours, provided they either following:
(i) any inventions that the Employee developed entirely on his or his own time without using the Company’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 business of any member of the Company GroupCompany’s business, or actual or demonstrably anticipated research or development of any member of the Company GroupCompany; or (ii2) result from or relate to any work performed by the Employee for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such DevelopmentEmployer.
(ii) Executive agrees to assist the CompanyInventions, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments developments and any copyrightsintangible interests and properties (i.e., patents, trademarkspatent applications, service marksintellectual property, database rightscopyrights, domain names, mask work rights, moral rightstrade secrets, and other intellectual property rights relating thereto trademarks) that Employee made prior to starting employment with the Company. To avoid any uncertainty, Employee agrees to set forth as an Exhibit to this Agreement, any inventions, developments and intangible interests that he owns or has an interest in any and all countries, including at the disclosure to the Company time of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.Agreement;
Appears in 3 contracts
Samples: Employment Agreement (Summit Healthcare REIT, Inc), Employment Agreement (Summit Healthcare REIT, Inc), Employment Agreement (Summit Healthcare REIT, Inc)
Assignment of Intellectual Property. (ia) Executive will promptly disclose to the Company any idea, invention, discovery or improvement, whether patentable or not (“Creations”), conceived or made by him alone or with others at any time during his employment. Executive agrees that the Company owns any such Creations conceived or made by Executive will, without additional compensation, promptly make full written disclosure to the Companyalone or with others at any time during his employment, and will hold in trust for the sole right Executive hereby assigns and benefit of agrees to assign to the Company all developmentsmoral or other rights he has or may acquire therein and agrees to execute any and all applications, original works assignments and other instruments relating thereto which the Company deems necessary or desirable. These obligations shall continue beyond the termination of authorship, inventions, concepts, know-how, improvements, trade secrets, his employment with respect to Creations and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be derivatives of such Creations conceived or made during his employment with the Company. The Company and Executive understand that the obligation to assign Creations to the Company shall not apply to any Creation which is developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the entirely on his own time of conception or reduction to practice without using any of the invention Company’s equipment, supplies, facilities, and/or Confidential Information unless such Creation (a) relates in any way to the business of any member of or to the Company Group, current or actual or demonstrably anticipated research or development of the Company or any member of its Affiliated Entities; or (b) results in any way from his work at the Company.
(b) In any jurisdiction in which moral rights cannot be assigned, Executive hereby waives any such moral rights and any similar or analogous rights under the applicable laws of any country of the world that Executive may have in connection with the Creations, and to the extent such waiver is unenforceable, hereby covenants and agrees not to bring any claim, suit or other legal proceeding against the Company or any of its Affiliated Entities claiming that Executive’s moral rights to the Creations have been violated.
(c) Executive will not assert any rights to any invention, discovery, idea or improvement relating to the business of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, of its Affiliated Entities or in consultation with personnel of any member of the Company Group (collectively referred to his duties hereunder as “Developments”). Executive further acknowledges that all Developments having been made or acquired by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made prior to his work for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(iid) Executive agrees to assist cooperate fully with the Company, or its designee, at both during and after his employment with the Company’s expense, in every way with respect to secure the rights procurement, maintenance and enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, trademarks and other intellectual property rights (both in the United States and foreign countries) relating thereto in any and to such Creations. Executive shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights and powers of attorney, and all other instruments that which the Company shall may deem necessary or desirable in order to apply for, obtain, maintain, and transfer such protect its rights and interests in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating theretoCreations. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If if the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason unable, after reasonable effort, to secure Executive’s signature to apply for or to pursue on any application for such papers, any United States or foreign patents or copyright registrations covering Developments or original works officer of authorship assigned to the Company shall be entitled to execute such papers as above, then his agent and attorney-in-fact and Executive hereby irrevocably designates and appoints each officer of the Company and its duly authorized officers and agents as Executive’s his agent and attorney in attorney-in-fact to act for and in Executive’s execute any such papers on his behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company take any and all claimsactions as the Company may deem necessary or desirable in order to protect its rights and interests in any Creations, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to under the Companyconditions described in this paragraph.
Appears in 2 contracts
Samples: Employment Agreement (Forward Industries Inc), Employment Agreement (Forward Industries Inc)
Assignment of Intellectual Property. (ia) Executive Subject to the exceptions as set forth in Schedule 1 as attached to this Agreement, Employee hereby assigns and agrees that Executive willto assign in the future (when first reduced to practice or fixed in a tangible medium, without additional compensation, promptly make full written disclosure as applicable) to the Company, and will hold in trust for the sole right agrees and benefit of acknowledges that the Company owns and shall own in perpetuity, free of any and all developmentsclaims by Employee or any person, original corporation or other entity deriving any rights from Employee, any and all of Employee’s right, title and interest in and to any and all trade secrets, inventions, methods, compositions, concepts, patents, pending patents, mask works, ideas, processes, formulas, source and object codes, data, programs, other works of authorship, inventions, concepts, know-how, improvements, trade secretsdiscoveries, developments, derivative works, designs and similar proprietary rightstechniques, whether or not patentable or registrable under copyright or patent laws or similar lawsstatutes or constituting trade secrets, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practiceconceived, or cause to be conceived or developed or made, reduced to practicepractice or learned by Employee, alone or with others, at any time during the Term of EmploymentEmployment Period or during the period, whether or not during regular working hoursif applicable, provided they either (i) relate at the time of conception or reduction to practice of the invention when Employee served as an Employee to the business of Company or provided any member of other services to the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (hereinafter collectively referred to as “DevelopmentsCreations”). Executive Employee further agrees and acknowledges that all Developments made Creations shall be deemed to be works “made-for-hire,” as defined in the United States Copyright Act and any similar provisions of other copyright laws throughout the world. Employee will promptly disclose to the Company any Creations conceived, made, reduced to practice, or learned by Executive (solely Employee, alone or jointly with others) within the scope of and , at any time during the Term of Employment are “works made for hire” (Period. Employee’s obligation hereunder to assign Creations to the greatest extent permitted by applicable law) for which Executive isCompany shall not apply to any Creation that is developed entirely on Employee’s own time without using any of the Company’s equipment, in partsupplies, compensated by Executive’s Base Salaryfacilities, and/or Confidential Information, unless regulated otherwise by lawsuch Creation (i) relates in any way to the business or research and development of the Company, but thator (ii) results or is derived in any way from Employee’s work as an employee of or Employee to the Company.
(b) Employee hereby assigns and agrees to assign to the Company all moral or other rights Employee has or may acquire in any Creations and agrees to execute any and all applications, assignments and other instruments relating thereto which the Company deems necessary or desirable. In any jurisdiction in the event which moral rights cannot be assigned, Employee hereby waives any such Development moral rights and any similar or analogous rights under the applicable laws of any country of the world that Employee may have in connection with the Creations, and to the extent such waiver is deemed unenforceable, hereby covenants and agrees not to be a bring any claim, suit, or other legal proceeding against the Company or any of its affiliates claiming that Employee’s moral rights have been violated.
(c) Employee will not assert any rights to any invention, discovery, idea, or improvement relating to the business or research and development of the Company or to Employee’s work as an employee of or Employee to the Company as having been made or acquired by Employee prior to Employee’s work for hireor service as an Employee to the Company. During the Employment Period or, Executive hereby assigns if applicable, service as an Employee to the Company, if Employee incorporates or its designeeincorporated into a product or process of the Company any prior existing intellectual property owned by the Employee, all Executive’s rightthe Company is hereby granted and shall have a non-exclusive, titleroyalty-free, irrevocable, perpetual, worldwide license (with the right to grant and interest throughout the world authorize sublicenses) to make, have made, modify, use, sell, offer to sell, import, reproduce, distribute, publish, prepare derivative works of, display, perform publicly and by means of digital audio transmission and otherwise exploit such invention, discovery, idea or improvement as part of or in and to connection with any such Developmentproduct, process or machine.
(iid) Executive Employee agrees to assist cooperate fully with the Company, or its designeeboth during and after the Employment Period, at with respect to the Company’s expenseprocurement, in every way to secure the rights maintenance and enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights (both in the United States and foreign countries) relating thereto in to any and Creations. Employee shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights and powers of attorney, which the Company may deem necessary or desirable in order to protect its rights and all other instruments interests in any Creations. Employee further agrees that if the Company is unable, after reasonable effort, to secure Employee’s signature on any such papers, any officer of the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation be entitled to execute or cause to be executed, when it is in Executivesuch papers as Employee’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive agent and attorney-in-fact and Employee hereby irrevocably designates and appoints each officer of the Company and its duly authorized officers and agents as ExecutiveEmployee’s agent and attorney in attorney-in-fact to act for and in Executiveexecute any such papers on Employee’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company take any and all claimsactions as the Company may deem necessary or desirable in order to protect its rights and interests in any Creations, under the conditions described in this paragraph. Employee’s obligations hereunder shall continue indefinitely beyond the termination of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to Employee’s employment with the Company.
Appears in 2 contracts
Samples: Employment Agreement (Bowmo, Inc.), Asset Purchase Agreement (Bowmo, Inc.)
Assignment of Intellectual Property. (a) The Employee will promptly disclose to the Company any idea, invention, discovery, or improvement, whether patentable or not (“Creations”), conceived or made by him alone or with others at any time during his/her employment with the Company or its affiliates. Employee agrees that the Company owns any such Creations, conceived, or made by Employee alone or with others at any time during his/her employment, and Employee hereby assigns and agrees to assign to the Company all moral or other rights he/she has or may acquire therein and agrees to execute any and all applications, assignments and other instruments relating thereto which the Company deems necessary or desirable. Employee hereby waives and relinquishes all moral rights he/she has or may acquire in the Creations and agrees to execute any and all other waivers and instruments relating thereto which the Company deems necessary or desirable. These obligations shall continue beyond the termination of his/her employment with respect to Creations and derivatives of such Creations conceived or made during his/her employment with the Company. The Company and Employee understand that the obligation to assign Creations to the Company shall not apply to any Creation which is developed entirely on his/her own time without using any of the Company’s equipment, supplies, facilities, and/or Confidential Information unless such Creation (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold relates in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention any way to the business of any member of or to the Company Group, current or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout (ii) results in any way from his/her work at the world in and to any such DevelopmentCompany.
(iib) Executive In any jurisdiction in which moral rights cannot be assigned, Employee hereby waives any such moral rights and any similar or analogous rights under the applicable laws of any state or country of the world that Employee may have in connection with the Creations, and to the extent such waiver is unenforceable, hereby covenants and agrees not to bring any claim, suit or other legal proceeding against the Company or any of its affiliates claiming that Employee’s moral rights have been violated.
(c) Employee agrees to assist cooperate fully with the Company both during and after his/her employment with the Company, or its designeewith respect to the procurement, at the Company’s expense, in every way to secure the rights maintenance and enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights (both in the United States and foreign countries) relating thereto in any and to such Creations. The Employee shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights and powers of attorney, which the Company may deem necessary or desirable in order to protect its rights and all other instruments interests in any Creations. Employee further agrees that if the Company is unable, after reasonable effort, to secure Employee’s signature on any such papers, any officer of the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation be entitled to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after as his/her agent and attorney-in-fact and the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive Employee hereby irrevocably designates and appoints each officer of the Company and its duly authorized officers and agents as Executive’s his/her agent and attorney in attorney-in-fact to act for and in Executive’s execute any such papers on his/her behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company take any and all claimsactions as the Company may deem necessary or desirable in order to protect its rights and interests in any Creations, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to under the Companyconditions described in this paragraph.
Appears in 2 contracts
Samples: Employment Agreement (reAlpha Tech Corp.), Employment Agreement (reAlpha Tech Corp.)
Assignment of Intellectual Property. (i) Executive agrees that Executive he will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (iA) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (iiB) result from or relate to any work performed for any member of the Company Group; or (iiiC) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive him (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s his Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s his obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s his reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
(iii) Notwithstanding the foregoing, this Section 9(c) is subject to the provisions of California Labor Code Sections 2870, 2871 and 2872. In accordance with Section 2870 of the California Labor Code, Executive’s obligation to assign Executive’s right, title and interest throughout the world in and to all Developments does not apply to any Developments that Executive developed entirely on his own time without using the Company’s equipment, supplies, facilities, or Confidential Information except for those Developments that relate to either (A) the business of the Company at the time of conception or reduction to practice of the Development, or actual or demonstrably anticipated research or development of the Company or (B) result from any work performed by Executive for the Company. A copy of California Labor Code Sections 2870, 2871 and 2872 is attached to this Agreement as Exhibit B. Executive shall disclose all Developments to the Company, even if Executive does not believe that Executive is required under this Agreement, or pursuant to California Labor Code Section 2870, to assign his interest in such Developments to the Company.
Appears in 2 contracts
Samples: Employment Agreement (Clearway Energy, Inc.), Employment Agreement (Clearway Energy LLC)
Assignment of Intellectual Property. (ia) Executive agrees that Executive willto and hereby does grant and assign to the Company any interest in and all rights and title to (including, without additional compensationlimitation, promptly make full written disclosure rights to the Companypatents, copyrights and will hold in trust for the sole right all other proprietary interests) any and benefit of the Company all developmentsinventions, original works of authorship, inventionsdevelopments, concepts, know-how, improvements, designs, discoveries, software, source code, object code, creations, developments, ideas, or trade secretssecrets that Executive (either alone or with others) makes, and similar proprietary rightscreates, conceives, invents, discovers, develops, or reduces to practice during the Employment Period under the Employment Agreement of time that (i) relates to the business of the Company or the Company’s actual or demonstrably anticipated research or development, (ii) results from any work Executive performed for the Company, or (iii) results from the use of the Company’s time, equipment, supplies, facilities, property, trade secrets or other Confidential Information (“Intellectual Property”). Any such assignment of Intellectual Property shall occur regardless whether or not it is patentable or registrable under copyright or similar lawsstatutes or subject to analogous protection. Any such assignment shall be without additional compensation to Executive. Executive acknowledges that he has and shall have no intellectual property or other right, which title or interest in or to any such Intellectual Property. Executive will promptly disclose and deliver such Intellectual Property to the Company and, at the request of and without charge to the Company, Executive will do all things deemed by the Company to be reasonably necessary to perfect title to the Intellectual Property in the Company and to assist in obtaining for the Company such patents, copyrights or other protection as may (or have previously) solely or jointly conceive or develop or reduce to practicebe provided under law and desired by the Company, including, without limitation, executing and signing any and all relevant applications, assignments, or cause other instruments. Executive further agrees to provide, at the Company’s request, declarations and affidavits and to give testimony, in depositions, hearings, or trials, in support of any of Company’s rights hereunder. These obligations continue even after any termination of the employment relationship. In the event the Company is unable, after reasonable effort, to secure Executive’s signature on any document or documents needed to apply for or prosecute any patent, copyright or other right or protection, for any reason whatsoever, Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as his agent and attorney-in-fact to act for and on his behalf to execute and file any such application or other document and to do all other lawfully permitted acts to further the prosecution and issuance of patents, copyrights, or similar protections thereon with the same legal force and effect as if executed by his.
(b) Executive acknowledges that all original works of authorship, including, without limitation, software, manuals and documentation, that have been or may be conceived or developed or reduced created by Executive during and within the scope of employment are and shall be “works-for-hire” and the sole property of the Company.
(c) Notwithstanding any provision of this Agreement, Executive understands and agrees that Executive is not being required to practiceassign, during and will not be deemed to have assigned, the Term of Employment, whether or not during regular working hours, provided they either following:
(i) any inventions that the Executive developed entirely on his or his own time without using the Company’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 business of any member of the Company GroupCompany’s business, or actual or demonstrably anticipated research or development of any member of the Company GroupCompany; or (ii2) result from or relate to any work performed by the Executive for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such DevelopmentEmployer.
(ii) Inventions, developments and intangible interests and properties (i.e., patents, patent applications, intellectual property, copyrights, trade secrets, and trademarks) that Executive made prior to starting employment with the Company. To avoid any uncertainty, Executive agrees to assist the Companyset forth as an Exhibit to this Agreement, any inventions, developments and intangible interests that he owns or its designee, has an interest in at the Company’s expense, in every way to secure the rights time of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.Agreement;
Appears in 2 contracts
Samples: Employment Agreement (Summit Healthcare REIT, Inc), Employment Agreement (Summit Healthcare REIT, Inc)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure hereby assigns to the Company, with exclusive and will hold unlimited rights of ownership, all of Executive’s right, title and interest in trust for the sole right and benefit of the Company to any and all developmentsproducts, inventions, original works of authorship, inventionsdevelopments, processes, concepts, know-howtechniques, improvementsdesigns, discoveries, ideas, methods, computer programs, software, databases, algorithms, mask works, trademarks or trade secrets, Confidential and similar proprietary rightsProprietary Information, and other technology and improvements, whether or not patentable or registrable under patent, copyright or similar laws, which Executive may (or have previously) solely or jointly conceive of or develop or reduce to practice, or cause to be conceived of or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception direction or reduction to practice of the invention to the business of any member on behalf of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “DevelopmentsInventions”). Executive hereby assigns to the Company, with exclusive and unlimited rights of ownership, any and all right, title, and interest in and to the Inventions and all intellectual property with respect thereto (including, but not limited to, copyrights, patents, trademarks, rights to data, mask work rights, trade secrets, know-how and proprietary information and all other intellectual property rights, together with rights in any registrations or applications for registration, rights to claim priority or xxx for past damages and infringements, as well as the right to alter, develop, assign and license such rights), whether existing at the beginning of his service to the Company, or developed thereafter during the course of his employment with the Company. In addition to the foregoing, Executive further hereby assigns to the Company all other Inventions relating thereto or to the development, production, use, support or maintenance thereof developed in whole or in part by Executive during the course of his employment with the Company along with all Inventions and all intellectual property with respect thereto (collectively all Inventions and other intellectual property described in this paragraph, the “IP Rights”). Executive further acknowledges that all Developments original works of authorship which have been or are made by Executive (solely or jointly with others) within the scope of and during the Term period of Employment his employment with the Company and which are protectable by copyright are “works made for hire,” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, as that term is defined in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works Copyright Act. This assignment is made in favor of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers successors-in-interest and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims assigns to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyIP Rights.
Appears in 2 contracts
Samples: Employment Agreement (Unit Corp), Employment Agreement (Unit Corp)
Assignment of Intellectual Property. (i) Executive To the fullest extent permitted by the laws of the State of New York, and the Copyright Act, Employee agrees that Executive willall right, without additional compensation, promptly make full written disclosure to the Companytitle, and will hold interest in trust for the sole right and benefit of the Company to any and all developmentsinventions, original works of authorship, inventionsdevelopments, concepts, improvements, designs, discoveries, ideas, know-how, improvementstrademarks, and trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive that Employee may (or have previously) solely or jointly conceive or develop or reduce to practiceauthored, or cause to be conceived or developed conceived, developed, or reduced to practice, practice during the Term period of Employment, whether or not during regular working hours, provided they either (i) relate at time he was in the time of conception or reduction to practice of the invention to the business of any member employ of the Company Group(including during his off-duty hours), or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through with the use of Company’s equipment, supplies, facilities, or facilities of any member Company confidential information (collectively, “Inventions”), are the sole property of the Company GroupCompany. Employee also agrees to assign, or any Confidential Informationand hereby irrevocably assigns fully to the Company, or all of Employee’s right, title and interest in consultation with personnel of any member of the Company Group (collectively referred and to as “Developments”)Inventions. Executive Employee further acknowledges that all Developments original works of authorship that are made by Executive Employee (solely or jointly with others) within the scope of and during the Term period of Employment his employment with the Company and that are protectable by copyright are “works made for hire,” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, as that term is defined in the event United States Copyright Act. Employee understands and agrees that the decision whether or not to commercialize or market any Inventions is within the Company’s sole discretion and for the Company’s sole benefit, and that no royalty, other consideration, or attribution will be due to Employee as a result of the Company’s efforts to commercialize or market any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive Inventions. Employee further agrees to assist the Company, or its designee, at the Company’s expense, in every proper way to secure the Company’s rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto Inventions in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem proper or necessary in order to apply for, register, obtain, maintain, defend, and transfer enforce such rights rights, and in order to deliver, assign and convey to the Company Group Company, its successors, assigns, and nominees the sole and exclusive rightrights, title, and interest in and to such Developmentsall Inventions, and testifying in a suit or other proceeding relating to such Inventions. In the event that any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination provision within this Section 12 conflicts with a provision of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; providedSurviving Provisions, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company12 shall control.
Appears in 2 contracts
Samples: Settlement Agreement (Blockstack Inc.), Settlement Agreement (Blockstack Token LLC)
Assignment of Intellectual Property. (ia) Executive Holder agrees that Executive Holder will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive Holder may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during Holder’s employment with the Term of EmploymentCompany Group, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive Holder further acknowledges that all Developments made by Executive Holder (solely or jointly with others) within the scope of and during Holder’s employment with the Term of Employment Company Group are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive Holder is, in part, compensated by ExecutiveHolder’s Base Salarybase salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive Holder hereby assigns to the Company, or its designee, all ExecutiveHolder’s right, title, and interest throughout the world in and to any such Development.
(iib) Executive Xxxxxx agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive Holder further agrees that ExecutiveXxxxxx’s obligation to execute or cause to be executed, when it is in ExecutiveXxxxxx’s power to do so, any such instrument or papers shall continue after the termination of the Term term of Employment Xxxxxx’s employment with the Company Group until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive Holder for ExecutiveHolder’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of ExecutiveXxxxxx’s mental or physical incapacity or unavailability for any other reason to secure ExecutiveXxxxxx’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive Holder hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as ExecutiveHolder’s agent and attorney in fact to act for and in ExecutiveXxxxxx’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive Holder hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive Holder now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 2 contracts
Samples: Restricted Stock Unit Award Agreement (MP Materials Corp. / DE), Restricted Stock Unit Award Agreement (MP Materials Corp. / DE)
Assignment of Intellectual Property. (i) Executive agrees that Executive he will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s his Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s his obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s his reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 2 contracts
Samples: Employment Agreement (Kodiak Gas Services, Inc.), Employment Agreement (Kodiak Gas Services, Inc.)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar lawslaws that were conceived after the effective date of this Agreement and related to the business of the Company, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company GroupCompany, or actual or demonstrably anticipated research or development of any member of the Company GroupCompany; (ii) result from or relate to any work performed for any member of the Company GroupCompany; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company GroupCompany, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”)) that are related to the business of the Company. Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development. To clarify this Section 9(c)(i) pertains to all intellectual property that have been conceived by the Executive after the effective date of this Agreement and the intellectual property directly relates to the business of the Company.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. The Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Samples: Employment Agreement (Genvor Inc)
Assignment of Intellectual Property. (i) Executive agrees that Executive willWithout further consideration, without additional compensation, I will promptly make full written disclosure disclose and assign to the Company, and will hold in trust for the sole right and benefit of the Company all developmentsright, original works of authorshiptitle and interest in all intellectual property (including, inventions, concepts, know-how, improvementsbut not limited to patents, trade secrets, trademarks, copyrights, mask works, inventions, improvements, ideas, discoveries, software and similar proprietary rightsother works of authorship), whether or not patentable or registrable under copyright otherwise protectable, conceived, created or similar lawsmade by me, which Executive may (either alone or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practicewith others, during the Term term of Employmentmy employment, whether and pertaining directly or indirectly to the Company's business or any potential extension thereof. The foregoing provision regarding assignment of right, title and interest does not during regular working hoursapply to any intellectual property for which no equipment, provided they either supplies, facilities or trade secret information of the Company was used and which was developed entirely on my own time, unless (a) the intellectual property relates (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or (ii) to the Company's actual or demonstrably anticipated research or development of any member of or (b) the Company Group; (ii) result intellectual property results from or relate to any work performed by me for the Company. The Company, in its sole discretion, may make changes of any member nature whatsoever to such intellectual property. During the term of my employment and thereafter, without further consideration, I will execute all papers and perform all other acts which may be reasonably requested by the Company Groupto vest title in the Company to all such intellectual property; or (iii) are developed through the use of equipment, supplies, or facilities of any member of which may be requested by the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for enforce any United States or foreign patents right in any such intellectual property. I understand that any application for protection of intellectual property which I may file or copyright registrations covering Developments or original works which may be filed on my behalf within one year after the termination of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints my employment with the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact which pertains directly or indirectly to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed work that I performed while employed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claimsshall be presumed to be based upon or to arise out of intellectual property that I conceived, of any nature whatsoever, that Executive now created or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to made while I was employed by the Company.
Appears in 1 contract
Samples: Proprietary Interest Protection Agreement (Pitney Bowes Inc /De/)
Assignment of Intellectual Property. (i) 5.1 The Executive recognizes and agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorshipideas, inventions, conceptspatents, know-howcopyrights, improvementscopyright designs, trade secrets, trademarks, processes, discoveries, enhancements, software, source code, catalogues, prints, business applications, plans, writings, and similar other developments or improvements and all other intellectual property and proprietary rightsrights and any derivative work based thereon made, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practiceconceived, or cause to be conceived completed by the Executive, alone or developed or reduced to practicewith others, during the Term term of Employmenthis employment, whether or not during regular working hours, that are within the scope of the Company’s business operations or that relate to any of the Company’s work or projects (including any and all inventions based wholly or in part upon ideas conceived during the Executive’s employment with the Company) (the “Inventions”), are the sole and exclusive property of the Company. The Executive further agrees that (1) he will promptly disclose all Inventions to the Company and hereby assigns to the Company all present and future rights he has or may have in those Inventions, including without limitation those relating to patent, copyright, trademark or trade secrets; and (2) all of the Inventions eligible under the copyright laws are “work made for hire.” At the request of the Company, the Executive will do all things deemed by the Company to be reasonably necessary to perfect title to the Inventions in the Company and to assist in obtaining for the Company such patents, copyrights or other protection as may be provided they either under law and desired by the Company, including but not limited to executing and signing any and all relevant applications, assignments or other instruments. The Company will reimburse the Executive for reasonable expenses incurred by the Executive as a result of his being required to comply with this Article.
5.2 Notwithstanding the foregoing, pursuant to the Employee Patent Act, Illinois Public Act 83-493, the Company hereby notifies the Executive that the provisions of this Article V shall not apply to any Inventions for which no equipment, supplies, facility or trade secret information of the Company was used and which were developed entirely on the Executive’s own time, unless (1) the Invention relates (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company GroupCompany, or (ii) to actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout (2) the world in and to Invention results from any such Development.
(ii) Executive agrees to assist work performed by the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Samples: Employment Agreement (Universal Access Global Holdings Inc)
Assignment of Intellectual Property. (i) The Executive agrees that Executive willshe has made and will continue to make, without additional compensation, promptly make prompt and full written disclosure to the Company if reasonably requested by the Company, and she holds and will continue to hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which the Executive may (has or will have previously) solely or jointly conceive conceived or develop developed or reduce reduced to practice, or cause caused to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate or related at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result or resulted from or relate or related to any work performed for any member of the Company Group; or (iii) are or were developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”); provided however, Developments shall not include any of the foregoing to the extent they are created in connection with any Permitted Activity (as defined in the Employment Agreement) or any Approved Activity and not otherwise covered by subsection (c)(i)(i) above. The Executive further acknowledges that all Developments made by the Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which the Executive has been and is, in part, compensated by the Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, the Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) The Executive agrees to reasonably assist the Company, or its designee, at the Company’s expense, in every reasonable way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including (taking into account Executive’s schedule), the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem reasonably necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. The Executive further agrees that the Executive’s obligation to execute or cause to be executed, when it is in the Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment Termination Date until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall pay in advance or reimburse the Executive for the Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of the Executive’s mental or physical incapacity or unavailability for any other reason to secure the Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then the Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as the Executive’s agent and attorney in fact to act for and in on the Executive’s behalf and in her stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by methe Executive. The Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have has for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure I hereby assign to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive my right, title, and interest in and to such Developmentsany and all inventions, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts and other intellectual property (and all Proprietary Rights with respect thereto) (collectively, “Intellectual Property”), whether or not patentable or registrable under patent, copyright or similar statutes, that were made or conceived or reduced to practice or learned by me, either alone or jointly with others, (i) at the direction of the Company, (ii) during the performance of my duties of employment, (iii) on Company time, (iv) using Company’s equipment, materials, supplies, facilities or Proprietary Information, or (v) that, at the time of conception, authorship, development, or reduction to practice of the Intellectual Property, relate to the business of the Company as conducted (or as proposed to be conducted) or the actual or demonstrably anticipated research or development of the Company, during the period of my employment with the Company. The only Intellectual Property excluded from this provision are those which are set forth in Exhibit A to this Agreement, or the assignment of which are prohibited pursuant to applicable law. I have attached, as Exhibit A, a list specifically describing all inventions, original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts, and other intellectual property that:
(i) I made, alone or jointly with others, prior to employment with Company;
(ii) belong to me, in which I have an ownership interest, or which are owned in whole or in part by another company, organization, or other entity of which I have an ownership interest; and
(iii) are not assigned to Company (collectively, “Retained Intellectual Property”); provided that if no such list is attached, I represent that there is no such Retained Intellectual Property. To preclude any possible uncertainty, I have also set forth on Exhibit A attached hereto a complete list of all inventions that I have, alone or jointly with others, conceived, developed, or reduced to practice or caused to be conceived, developed, or reduced to practice prior to commencement of my employment with the Company, in which I have assigned my ownership interest to a third party and that I wish to have excluded from the scope of this Agreement; provided that if no such list is attached, I represent that there are no such inventions. If disclosure of any such invention on Exhibit A would cause me to violate any prior confidentiality agreement, I understand that I am not to list such inventions in Exhibit A but am to describe such invention with as much specificity as possible without violating any prior agreement and state that additional information has been withheld for that reason. All Intellectual Property assigned to the Company by this Section 4 is hereinafter referred to as above“Company Intellectual Property.”
(b) If in the course of my employment with the Company, then Executive hereby irrevocably designates and appoints the Company incorporates into any Company product, process or machine any Retained Intellectual Property, I hereby grant and its duly authorized officers and agents as Executive’s agent and attorney in fact the Company shall have a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application formake, prosecutionhave made, issuancemodify, maintenancecreate derivative works of, improve, use, import, export, and transfer sell such Retained Intellectual Property as part of letters patent or registrations thereon in connection with the same legal force such product, process or machine. I agree to and effect as if originally executed by me. Executive do hereby waives and irrevocably quitclaims assign to the Company any and all claimsright, title, and interest in and to any and all modifications, improvements, and other derivative works made by or on behalf of Company to any nature whatsoeversuch Retained Intellectual Property that is licensed to Company pursuant to this Section 4, and thus any and all such modifications, improvements, and other derivative works are deemed Company Intellectual Property.
(c) I acknowledge that Executive all original works of authorship that are made by me (solely or jointly with others) during the term of my employment with the Company and that are within the scope of my employment and protectable by copyright (“Works”) are “works made for hire,” as that term is defined in the United States Copyright Act (17 U.S.C. § 101). If for any reason any such Works or any part thereof would not or cannot be considered a “work made for hire” under applicable law, I agree to and do hereby sell, assign, and transfer to Company, its successors and assigns, the entire right, title and interest in and to the copyright in such Work and any registrations and copyright applications relating thereto and any renewals and extensions thereof, and in and to all works based upon, derived from, or incorporating that Work, and in and to all income, royalties, damages, claims and payments now or hereafter have due or payable with respect thereto, and in and to all causes of action, either in law or in equity for past, present, or future infringement of any based on the copyrights, and in and to all proprietary rights assigned corresponding to the foregoing throughout the world. I hereby waive, as against Company, its successors, assigns and licensees, all moral rights which I have or acquire in respect of all such Works. I agree to enforce the moral rights as against others as directed by and at the cost of Company or its successor-in-title of the copyright in the Works.
(d) I acknowledge and agree that the Company is not obligated to commercialize any Company Intellectual Property, and that if I desire to independently commercialize any of said Company Intellectual Property, I must request and obtain a written license from the Company beforehand, which license request may be declined by the Company in its sole discretion.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive Employee agrees that Executive will, without additional compensation, Employee will promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company Company, and to and does hereby irrevocably assign to the Company, or its designee, all developmentsEmployee’s right, title, and interest in and to any and all inventions, original works of authorship, inventionsdevelopments, concepts, know-how, improvements, designs, discoveries, ideas, processes, designs, methods, substances, articles, computer programs, derivative works, trademarks, or trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright patent, copyright, or similar laws, which Executive may (or have previously) Employee has solely or jointly conceive conceived, invented, discovered, created, developed or develop or reduce reduced to practice, or cause caused to be conceived or conceived, invented, discovered, created, developed or reduced to practice, during the Term period of Employment, whether or not during regular working hours, provided they either (i) relate at time Employee has been in the time of conception or reduction to practice of the invention to the business of any member employ of the Company Group(including during Employee’s off-duty hours), or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through with the use of Company’s equipment, supplies, or facilities of any member of the Company Groupfacilities, or any Company Confidential Information, or which Employee may solely or jointly conceive, invent, discover, create, develop or reduce to practice, or conceive, invent, discover, create, develop or reduce to practice, during the period of time Employee is in consultation with personnel of any member the employ of the Company Group (including during Employee’s off-duty hours), or with the use of Company’s equipment, supplies, facilities, or Company Confidential Information (collectively referred to as “DevelopmentsIntellectual Property”). Executive Employee further acknowledges that all Developments original works of authorship that are or have been made by Executive (solely or jointly with others) within the scope of and during the Term period of Employment Employee’s employment with the Company and that are protectable by copyright are “works made for hire,” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, as that term is defined in the event United States Copyright Act. Employee hereby irrevocably relinquishes and forever waives for the benefit of the Company any such Development is deemed moral rights (defined as either any right to claim authorship of a work or any right to object to any distortion or other modification of a work, or any similar right existing under the law of any country in the world or under any international agreement) in any original work of authorship. Employee understands and agrees that the decision whether or not to be a work made for hire, Executive hereby assigns to the Company, commercialize or its designee, all Executive’s right, title, and interest throughout the world in and to market any such Development.
(ii) Executive agrees to assist the Company, or its designee, at Intellectual Property is within the Company’s expensesole discretion and for the Company’s sole benefit, in every way to secure the rights and that no royalty or other consideration will be due as a result of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure Company’s efforts to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute commercialize or cause to be executed, when it is in Executive’s power to do so, market any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyIntellectual Property.
Appears in 1 contract
Samples: Invention Assignment and Confidentiality Agreement (ZS Pharma, Inc.)
Assignment of Intellectual Property. (i) Executive agrees that Executive she will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all of Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii10(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentEmployment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by meExecutive. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have has for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (i) The Executive further agrees that all works or products which the Executive willdevelops, without additional compensationprepares or works on either individually or on a team during this Agreement or during employment that predated this Agreement (“Work Products”), promptly make full written disclosure belong exclusively to the Company. To the extent not previously transferred to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company unconditionally assigns and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims transfers to the Company any and all claimsright, of any nature whatsoevertitle or interest he had, that Executive now has or hereafter have for past, present, or future infringement of obtains in and/or to any and all proprietary rights assigned data, interpretations, studies, processes of or relating to the present or proposed properties which the Company owns or in which the Company has an interest, including, without limitation, all technical reports, software and documentation related thereto. Further, the Executive hereby irrevocably and unconditionally assigns and transfers to the Company any and all right, title or interest he had, has or obtains in and/or to any inventions, discoveries, works of authorship, designs, programs, documentation and other property (including, without limitation, chemical formulas and processes, computer software and all source code and documentation related thereto) and all intellectual property rights therein (including copyright) relating to the past, present or proposed business of the Company, such that they are now the sole property of the Company, and that the Executive has no further right or claim thereto, whether preceding, during or following the term of the Executive’s contract with the Company. Further, the Executive hereby waives any moral rights or rights of a similar nature he may have in any of the foregoing. Nothing herein will restrict the Executive following termination of this Agreement from using technical information that is available in the public domain, or from using his expertise and experience in technical matters whether gained in the course of providing services to the Company or otherwise, in the provision of services outside the scope of this Agreement, provided the provisions of this Agreement relating to confidentiality, non-competition, and conflicting obligations are complied with by the Executive in the course of using such information and expertise.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive he will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (iA) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (iiB) result from or relate to any work performed for any member of the Company Group; or (iiiC) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s his Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s his obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s his reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar lawslaws that were conceived after the effective date of this Agreement and related to the business of the Company, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company GroupCompany, or actual or demonstrably anticipated research or development of any member of the Company GroupCompany; (ii) result from or relate to any work performed for any member of the Company GroupCompany; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company GroupCompany, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”)) that are related to the business of the Company. Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development. To clarify this Section 9(c)(i) pertains to all intellectual property that have been conceived by the Executive after the effective date of this Agreement and the intellectual property directly relates to the business of the Company.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Samples: Employment Agreement (Genvor Inc)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar lawslaws that were conceived after the effective date of this Agreement and related to the business of the Company Group, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”)) that are related to the business of the Company Group. Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development. To clarify this Section 9(c)(i) pertains to all intellectual property that have been conceived by the Executive after the effective date of this Agreement and the intellectual property directly relates to the business of the Company Group.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive agrees that Executive willwill promptly disclose to the Company any idea, without additional compensationinvention, promptly make full written disclosure discovery, or improvement, whether patentable or not (“Creations”), conceived or made by him alone or with others at any time during his employment with the Company or while providing services to the Company, P10, or any Affiliated Entity. Executive agrees that the Company owns any such Creations, and will hold in trust for the sole right Executive hereby assigns and benefit of agrees to assign to the Company all developmentsmoral and other rights he has or may acquire therein and agrees to execute any and all applications, original works assignments and other instruments relating thereto which the Company deems necessary or desirable. These obligations shall continue beyond the termination of authorshiphis employment with respect to Creations and derivatives of such Creations conceived or made during his employment with the Company. The Company and Executive understand that the obligation to assign Creations to the Company shall not apply to any Creation which is developed entirely on his own time without using any of the Company’s, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practiceP10’s, or cause to be conceived or developed or reduced to practiceany Affiliated Entity’s equipment, during the Term of Employmentsupplies, whether or not during regular working hoursfacilities, provided they either and/or Confidential Information (“Executive Creations”) unless such Creation (i) relate at the time of conception or reduction to practice of the invention relates in any way to the business of any member of or to the Company Group, current or actual or demonstrably anticipated research or development of the Company, P10, or any member of the Company Group; Affiliated Entities, or (ii) result results in any way from or relate to any work performed for any member of his employment with the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, work for P10 or any Confidential Information, or Affiliated Entities.
(b) In any jurisdiction in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed moral rights cannot to be a work made for hireassigned, Executive hereby assigns waives any such moral rights and any similar or analogous rights under the applicable laws of any country of the world that Executive may have in connection with the Creations, and to the Companyextent such waiver is unenforceable, hereby covenants and agrees not to bring any claim, suit, or its designee, all other legal proceeding against the Company or any Affiliated Entity claiming that Executive’s right, title, and interest throughout moral rights to the world in and to any such DevelopmentCreations have been violated.
(iic) Executive agrees to assist reasonably cooperate with the Company, or its designeeP10, at and the Affiliated Entities, both during and after his employment with the Company’s expense, in every way with respect to secure the rights procurement, maintenance, and enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights (both in the United States and foreign countries) relating thereto in any and to such Creations. Executive shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights, and all other instruments that powers of attorney, which the Company shall reasonably may deem necessary or desirable in order to apply for, obtain, maintain, and transfer such protect its rights and interests in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating theretoCreations. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If if the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason unable, after reasonable effort, to secure Executive’s signature to apply for or to pursue on any application for such papers, any United States or foreign patents or copyright registrations covering Developments or original works officer of authorship assigned to the Company shall be entitled to execute such papers as abovehis agent and attorney-in-fact, then and Executive hereby irrevocably designates and appoints each officer of the Company and its duly authorized officers and agents as Executive’s his agent and attorney in attorney-in-fact to act for and in Executive’s execute any such papers on his behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company take any and all claimsactions as the Company may deem necessary or desirable in order to protect its rights and interests in any Creations, of any nature whatsoeverunder the conditions described in this paragraph, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Companyexclusion of Executive’s Creations.
Appears in 1 contract
Samples: Employment Agreement (P10, Inc.)
Assignment of Intellectual Property. (ia) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure I hereby assign to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive my right, title, and interest in and to such Developmentsany and all inventions, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts and other intellectual property (and all Proprietary Rights with respect thereto) (collectively, “Intellectual Property”), whether or not patentable or registrable under patent, copyright or similar statutes, that were made or conceived or reduced to practice or learned by me, either alone or jointly with others, (i) at the direction of the Company, (ii) during the performance of my duties of employment, (iii) on Company time, (iv) using Company’s equipment, materials, supplies, facilities or Proprietary Information, or (v) that, at the time of conception, authorship, development, or reduction to practice of the Intellectual Property, relate to the business of the Company as conducted (or as proposed to be conducted) or the actual or demonstrably anticipated research or development of the Company, during the period of my employment with the Company. The only Intellectual Property excluded from this provision are those which are set forth in Exhibit A to this Agreement, or the assignment of which are prohibited pursuant to applicable law. I have attached, as Exhibit A, a list specifically describing all inventions, original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts, and other intellectual property that:
(i) I made, alone or jointly with others, prior to employment with Company;
(ii) belong to me, in which I have an ownership interest, or which are owned in whole or in part by another company, organization, or other entity of which I have an ownership interest; and
(iii) are not assigned to Company (collectively, “Retained Intellectual Property”); provided that if no such list is attached, I represent that there is no such Retained Intellectual Property. To preclude any possible uncertainty, I have also set forth on Exhibit A attached hereto a complete list of all inventions that I have, alone or jointly with others, conceived, developed, or reduced to practice or caused to be conceived, developed, or reduced to practice prior to commencement of my employment with the Company, in which I have assigned my ownership interest to a third party and that I wish to have excluded from the scope of this Agreement; provided that if no such list is attached, I represent that there are no such inventions. If disclosure of any such invention on Exhibit A would cause me to violate any prior confidentiality agreement, I understand that I am not to list such inventions in Exhibit A but am to inform the Company that all inventions have not been listed for that reason. All Intellectual Property assigned to the Company by this Section 4 is hereinafter referred to as above“Company Intellectual Property.”
(b) If in the course of my employment with the Company, then Executive hereby irrevocably designates and appoints the Company incorporates into any Company product, process or machine any Retained Intellectual Property, I hereby grant and its duly authorized officers and agents as Executive’s agent and attorney in fact the Company shall have a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application formake, prosecutionhave made, issuancemodify, maintenancecreate derivative works of, improve, use, import, export, and transfer sell such Retained Intellectual Property as part of letters patent or registrations thereon in connection with the same legal force such product, process or machine. I agree to and effect as if originally executed by me. Executive do hereby waives and irrevocably quitclaims assign to the Company any and all claimsright, title, and interest in and to any and all modifications, improvements, and other derivative works made by or on behalf of Company to any nature whatsoeversuch Retained Intellectual Property that is licensed to Company pursuant to this Section 4, and thus any and all such modifications, improvements, and other derivative works are deemed Company Intellectual Property.
(c) I acknowledge that Executive all original works of authorship that are made by me (solely or jointly with others) during the term of my employment with the Company and that are within the scope of my employment and protectable by copyright (“Works”) are “works made for hire,” as that term is defined in the United States Copyright Act (17 U.S.C. § 101). If for any reason any such Works or any part thereof would not or cannot be considered a “work made for hire” under applicable law, I agree to and do hereby sell, assign, and transfer to Company, its successors and assigns, the entire right, title and interest in and to the copyright in such Work and any registrations and copyright applications relating thereto and any renewals and extensions thereof, and in and to all works based upon, derived from, or incorporating that Work, and in and to all income, royalties, damages, claims and payments now or hereafter have due or payable with respect thereto, and in and to all causes of action, either in law or in equity for past, present, or future infringement of any based on the copyrights, and in and to all proprietary rights assigned corresponding to the foregoing throughout the world. I hereby waive, as against Company, its successors, assigns and licensees, all moral rights which I have or acquire in respect of all such Works. I agree to enforce the moral rights as against others as directed by and at the cost of Company or its successor-in-title of the copyright in the Works.
(d) I acknowledge and agree that the Company is not obligated to commercialize any Company Intellectual Property, and that if I desire to independently commercialize any of said Company Intellectual Property, I must request and obtain a written license from the Company beforehand, which license request may be declined by the Company in its sole discretion.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all of Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii10(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by meExecutive. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have has for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (a) Employee acknowledges and agrees that all intellectual property, including without limitation, all designs, techniques, devices, discoveries, processes, software, writings, inventions, improvements or documentation and all related know how, produced, made, conceived or authored by Employee, solely or jointly with others, in the course of Employee’s employment with the Company together with any intellectual property rights therein, are works made for hire and the property of the Company if such works (i) Executive agrees that Executive willrelate in any manner, without additional compensation, promptly make full written disclosure to at the Company, and will hold in trust for time the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be work is conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research business, research, or development of any member of the Company GroupCompany; (ii) are suggested by or result from any task assigned to Employee or relate to any work performed by Employee for any member or on behalf of the Company GroupCompany; or (iii) are created or developed through with the use of Company equipment, supplies, facilities, information or facilities of materials. Employee shall disclose any member of such intellectual property promptly to the Company Group, or and hereby assigns any Confidential Information, or and all rights in consultation with personnel of any member of such works to the Company Group or its assignees.
(collectively referred b) To the extent that any such intellectual property may not, by operation of law, be works made for hire, Employee will assign and does hereby assign to as “Developments”). Executive further acknowledges the Company the ownership of, and all right, title and interest in, such items, and the Company shall have the right to obtain and hold in its own name, all intellectual property rights, including without limitation, patent, trade secret, copyright and similar protections which may be available in such works throughout the world.
(c) Employee agrees that all Developments intellectual property made by Executive (him, solely or jointly with others) within , that are based on or contain proprietary information of the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns Company shall belong to the Company, and Employee hereby assigns any and all rights in such future intellectual property to the Company. For the purposes of this subsection, a work of authorship is based on the proprietary information of the Company if the work derives from or its designee, all Executive’s right, title, and interest throughout the world in and to incorporates any such Developmentinformation in principle, structure, expression or design.
(iid) Executive Employee agrees to assign to the Company all rights in any other work of authorship made by Employee if the Company is required to grant those rights to the United States Government or any of its agencies.
(e) Employee agrees to assist the Company, or its designeedesignee or assignee, at the Company’s expense, in every proper way to secure the Company’s rights of the Company Group in the Developments such intellectual property and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and rights or other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, assignments and all other instruments that which the Company shall deem necessary in order to apply for, obtain, maintain, for and transfer obtain such rights and in order to assign and convey to the Company Group Company, its successors, assigns, and nominees the sole and exclusive rightrights, title, title and interest in and to such Developmentsworks of authorship, and any copyright, patents, mask work rights or other intellectual property and other proprietary rights relating thereto. Executive Employee further agrees that Executive’s his obligation to execute or cause to be executed, when it is in Executive’s his power to do so, any such instrument or papers shall continue after the termination of date hereof.
(f) In the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If event the Company is unable because of Executivedue to Employee’s mental subsequent disability or physical incapacity or unavailability for any other reason whatsoever to secure ExecutiveEmployee’s signature to any lawful and necessary document required to apply for for, register or execute any patent, copyright or other applications with respect to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as abovesuch intellectual property, then Executive Employee hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent his agents and attorney in attorneys-in-fact to act for and in Executive’s behalf and stead to execute and file any such applications or records application and to do all other lawfully permitted acts to further the application forprosecution and issuance of patents, prosecution, issuance, maintenance, and transfer of letters patent copyrights or registrations other rights thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims him.
(g) In order to permit the Company to claim rights to which it may be entitled, Employee agrees to disclose to the Company any in writing and in confidence (i) all claimsintellectual property as described in paragraph (a) above that Employee made, either solely or jointly with others, during the term of any nature whatsoeverhis employment with the Company, that Executive now or hereafter have for past, presentand (ii) all patent and copyright applications filed by him during, or future infringement within one (1) year after the termination of, his employment, unless such disclosure is prevented by law or a separate agreement. Employee also agrees to submit to a reasonable and confidential review process under which the Company may determine such issues as may arise under this paragraph.
(h) If in the course of any and all proprietary rights assigned to Employee’s employment with the Company, Employee incorporated into a Company product, process or code any invention, original work of authorship, development, improvement, or trade secrets that was made by Employee before his employment with the Company (collectively referred to as “Prior Inventions”), the Company is hereby granted and shall have a non-exclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use and sell such Prior Invention as part of or in connection with such product, process or code.
Appears in 1 contract
Assignment of Intellectual Property. (a) Executive will promptly disclose to the Company any idea, invention, discovery or improvement, whether patentable or not (“Creations”), conceived or made by him alone or with others at any time during his employment with the Company. Executive agrees that the Company owns any such Creations, and Executive hereby assigns and agrees to assign to the Company all moral and other rights he has or may acquire therein and agrees to execute any and all applications, assignments and other instruments relating thereto which the Company deems necessary or desirable. These obligations shall continue beyond the termination of his employment with respect to Creations and derivatives of such Creations conceived or made during his employment with the Company. The Company and Executive understand that the obligation to assign Creations to the Company shall not apply to any Creation which is developed entirely on his own time without using any of the Company’s equipment, supplies, facilities, and/or Confidential Information (“Executive Creations”) unless such Creation (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold relates in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention any way to the business of any member of or to the Company Group, current or actual or demonstrably anticipated research or development of any member of the Company Group; or any of its Affiliated Entities, or (ii) result results in any way from or relate to his work at the Company.
(b) In any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or jurisdiction in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed moral rights cannot to be a work made for hireassigned, Executive hereby assigns waives any such moral rights and any similar or analogous rights under the applicable laws of any country of the world that Executive may have in connection with the Creations, and to the Companyextent such waiver is unenforceable, hereby covenants and agrees not to bring any claim, suit or other legal proceeding against the Company or any of its designee, all Affiliated Entities claiming that Executive’s right, title, and interest throughout moral rights to the world in and to any such DevelopmentCreations have been violated.
(iic) Executive agrees to assist reasonably cooperate with the Company, or its designee, at both during and after his employment with the Company’s expense, in every way with respect to secure the rights procurement, maintenance and enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, trademarks and other intellectual property rights (both in the United States and foreign countries) relating thereto in any and to such Creations. Executive shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights and powers of attorney, and all other instruments that which the Company shall Company, acting reasonably, may deem necessary or desirable in order to apply for, obtain, maintain, and transfer such protect its rights and interests in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating theretoCreations. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If if the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason unable, after reasonable effort, to secure Executive’s signature to apply for or to pursue on any application for such papers, any United States or foreign patents or copyright registrations covering Developments or original works officer of authorship assigned to the Company shall be entitled to execute such papers as above, then his agent and attorney-in-fact and Executive hereby irrevocably designates and appoints each officer of the Company and its duly authorized officers and agents as Executive’s his agent and attorney in attorney-in-fact to act for and in Executive’s execute any such papers on his behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company take any and all claimsactions as the Company may deem necessary or desirable in order to protect its rights and interests in any Creations, of any nature whatsoeverunder the conditions described in this paragraph, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Companyexclusion of Executive’s Creations.
Appears in 1 contract
Assignment of Intellectual Property. (a) Employee will promptly disclose to the Company any idea, invention, discovery or improvement, whether patentable or not (“Creations”), conceived or made by him or her alone or with others at any time during his or her employment. Employee agrees that the Company owns any such Creations, conceived or made by Employee alone or with others at any time during his or her employment, and Employee hereby assigns and agrees to assign to the Company all moral or other rights (s)he has or may acquire therein and agrees to execute any and all applications, assignments and other instruments relating thereto which the Company deems necessary or desirable. These obligations shall continue beyond the termination of his or her employment with respect to Creations and derivatives of such Creations conceived or made during his or her employment with the Company. The Company and Employee understand that the obligation to assign Creations to the Company shall not apply to any Creation which is developed entirely on his or her own time without using any of the Company’s equipment, supplies, facilities, and/or Confidential Information unless such Creation (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold relates in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention any way to the business of any member of or to the Company Group, current or actual or demonstrably anticipated research or development of any member of the Company Group; or (ii) result results in any way from his or relate to her work at the Company.
(b) In any work performed for jurisdiction in which moral rights cannot be assigned, Employee hereby waives any member such moral rights and any similar or analogous rights under the applicable laws of any country of the Company Group; world that Employee may have in connection with the Creations, and to the extent such waiver is unenforceable, hereby covenants and agrees not to bring any claim, suit or (iii) are developed through the use of equipment, supplies, or facilities of any member of other legal proceeding against the Company Group, or any Confidential Information, or in consultation of its affiliates claiming that Employee’s moral rights have been violated.
(c) Employee agrees to cooperate fully with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely both during and after his or jointly her employment with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designeewith respect to the procurement, all Executive’s right, title, maintenance and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, trademarks and other intellectual property rights (both in the United States and foreign countries) relating thereto in any and to such Creations. Employee shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights and powers of attorney, which the Company may deem necessary or desirable in order to protect its rights and all other instruments interests in any Creations. Employee further agrees that if the Company is unable, after reasonable effort, to secure Employee’s signature on any such papers, any officer of the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation be entitled to execute such papers as his or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive her agent and attorney-in-fact and Employee hereby irrevocably designates and appoints each officer of the Company and its duly authorized officers and agents as Executive’s his or her agent and attorney in attorney-in-fact to act for and in Executive’s execute any such papers on his or her behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company take any and all claimsactions as the Company may deem necessary or desirable in order to protect its rights and interests in any Creations, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to under the Companyconditions described in this paragraph.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive To the fullest extent permitted by the laws of the State of Florida, and the Copyright Act, Chairman agrees that Executive willall right, without additional compensation, promptly make full written disclosure to the Companytitle, and will hold interest in trust for the sole right and benefit of the Company to any and all developmentsinventions, original works of authorship, inventionsdevelopments, concepts, improvements, designs, discoveries, ideas, know-how, improvementstrademarks, and trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive that Chairman may (or have previously) solely or jointly conceive or develop or reduce to practiceauthored, or cause to be conceived or developed conceived, developed, or reduced to practice, practice during the Term period of Employment, whether or not during regular working hours, time he provided they either (i) relate at the time of conception or reduction to practice of the invention services to the business of Company, Recall, or any member affiliate, subsidiary, or predecessor corporation of the Company Group(including during his off-duty hours), or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through with the use of the Company’s, Recall’s, or any affiliate’s, subsidiary’s, or predecessor corporation’s equipment, supplies, facilities, or facilities of any member Confidential Information (collectively, “Inventions”), are the sole property of the Company GroupCompany. Chairman also agrees to assign, or any Confidential Informationand hereby irrevocably assigns fully to the Company, or all of Chairman’s right, title and interest in consultation with personnel of any member of the Company Group (collectively referred and to as “Developments”)Inventions. Executive Chairman further acknowledges that all Developments original works of authorship that are made by Executive Chairman (solely or jointly with others) within the scope of and during the Term period of Employment his relationship with the Company, Recall, or any affiliate, subsidiary, or predecessor corporation of the Company and that are protectable by copyright are “works made for hire,” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, as that term is defined in the event United States Copyright Act. Chairman understands and agrees that the decision whether or not to commercialize or market any Inventions is within the Company’s sole discretion and for the Company’s sole benefit, and that no royalty, other consideration, or attribution will be due to Chairman as a result of the Company’s efforts to commercialize or market any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive Inventions. Chairman further agrees to assist the Company, or its designee, at the Company’s expense, in every proper way to secure the Company’s rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto Inventions in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem proper or necessary in order to apply for, register, obtain, maintain, defend, and transfer enforce such rights rights, and in order to deliver, assign and convey to the Company Group Company, its successors, assigns, and nominees the sole and exclusive rightrights, title, and interest in and to such Developmentsall Inventions, and any intellectual property and testifying in a suit or other proprietary rights proceeding relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyInventions.
Appears in 1 contract
Samples: Separation and Settlement Agreement (fuboTV Inc. /FL)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar lawslaws that were conceived after the effective date of this Agreement and related to the business of the Company, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”)) that are related to the business of the Company Group. Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development. To clarify this Section 9(c)(i) pertains to all intellectual property that have been conceived by the Executive after the effective date of this Agreement and the intellectual property directly relates to the business of the Company Group.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive will promptly disclose to the Company any idea, invention, discovery or improvement, whether patentable or not (“Creations”), conceived or made by him alone or with others at any time during the Term. Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to the CompanyCompany owns any such Creations, and will hold in trust for the sole right Executive hereby assigns and benefit of agrees to assign to the Company all developmentsmoral and other rights he has or may acquire therein and agrees to execute any and all applications, original works assignments and other instruments relating thereto which the Company deems necessary or desirable. These obligations shall continue beyond the termination of authorship, inventions, concepts, know-how, improvements, trade secrets, his employment with respect to Creations and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be derivatives of such Creations conceived or made during his employment with the Company. Notwithstanding the foregoing provisions of this Section 9, the Company and Executive understand that the obligation to assign Creations to the Company shall not apply to any Creation which is developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the entirely on Executive’s own time of conception or reduction to practice without using any of the invention to the business of any member of the Company GroupCompany’s equipment, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) supplies, facilities, and/or Confidential Information and which does not result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive in connection with his employment with the Company.
(solely or jointly with othersb) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for In any jurisdiction in which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed moral rights cannot to be a work made for hireassigned, Executive hereby assigns waives any such moral rights and any similar or analogous rights under the applicable laws of any country of the world that Executive may have in connection with the Creations, and to the Companyextent such waiver is unenforceable, hereby covenants and agrees not to bring any claim, suit or other legal proceeding against the Company or any of its designee, all Affiliated Entities claiming that Executive’s right, title, and interest throughout moral rights to the world in and to any such DevelopmentCreations have been violated.
(iic) Executive agrees to assist cooperate fully with the Company, or its designeeboth during and after the Term, at with respect to the Company’s expenseprocurement, in every way to secure the rights maintenance and enforcement of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, trademarks and other intellectual property rights (both in the United States and foreign countries) relating thereto in any and to such Creations. Executive shall sign all countriespapers, including the disclosure to the Company of all pertinent information and data with respect theretoincluding, the execution of all without limitation, copyright applications, specificationspatent applications, declarations, oaths, formal assignments, recordationsassignments of priority rights and powers of attorney, and all other instruments that which the Company shall may deem necessary or desirable in order to apply for, obtain, maintain, and transfer such protect its rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire interests in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyCreations.
Appears in 1 contract
Samples: Employment Agreement (Cicero Inc)
Assignment of Intellectual Property. (i) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure to assign and hereby assigns to the CompanyCompany (the “Assignment”) any and all rights, improvements and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, conceptscopyrightable or patentable subject matter, know-how, improvementsand other intellectual property relating to the Company’s business (or any of its subsidiaries’ businesses) which Executive conceived or developed, or may conceive or develop, either alone or with others, or which otherwise arose or may arise during Executive’s employment with the Company and for a period of eighteen (18) months thereafter (“Assignable Property”). For the avoidance of doubt, the Assignable Property does not apply to an invention for which no equipment, supplies, facility or trade secretssecret information of the Company was used and which was developed entirely on the Executive’s own time, and similar proprietary rights, whether or (1) which does not patentable or registrable under copyright or similar laws, which Executive may relate (or have previouslya) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention directly to the business of any member of the Company Group, employer or (b) to the employer's actual or demonstrably anticipated research or development development, or (2) which does not result from any work performed by the Executive for the Company. Executive shall promptly disclose to the Company all Assignable Property. Executive agrees not to assert any rights against the Company (or any of its subsidiaries) or seek compensation from the Company (or any member of its subsidiaries) for the foregoing Assignment or the Company’s (or any of its subsidiaries) use of Assignable Property. Executive shall promptly disclose to the Company all knowledge that Executive has or obtains regarding Assignable Property and, at the request of the Company, Executive shall, without expense or additional compensation, provide the Company Groupwith whatever assistance that the Company may request of Executive including, but not limited to: (i) signing documents to further evidence and perfect an Assignment; (ii) result from obtaining for the Company patents, trademarks and trademark protection, copyrights and copyright protection, assignment of rights, and protection of trade secrets; and (iii) taking any other action the Company deems appropriate for securing or relate to any work performed for any member protecting its rights in Assignable Property or other intellectual property of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Developmentsubsidiaries.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive he will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive Employee agrees that Executive willto and hereby does grant and assign to the Company any interest in and all rights and title to (including, without additional compensationlimitation, promptly make full written disclosure rights to the Companypatents, copyrights and will hold in trust for the sole right all other proprietary interests) any and benefit of the Company all developmentsinventions, original works of authorship, inventionsdevelopments, concepts, know-how, improvements, designs, discoveries, software, source code, object code, creations, developments, ideas, or trade secretssecrets that Employee (either alone or with others) makes, and similar proprietary rightscreates, conceives, invents, discovers, develops, or reduces to practice during the Employment Period under the Employment Agreement that
(i) relates to the business of the Company or the Company’s actual or demonstrably anticipated research or development, (ii) results from any work Employee performed for the Company, or (iii) results from the use of the Company’s time, equipment, supplies, facilities, property, trade secrets or other Confidential Information (“Intellectual Property”). Any such assignment of Intellectual Property shall occur regardless whether or not it is patentable or registrable under copyright or similar lawsstatutes or subject to analogous protection. Any such assignment shall be without additional compensation to Employee. Employee acknowledges that she has and shall have no intellectual property or other right, which Executive title or interest in or to any such Intellectual Property. Employee will promptly disclose and deliver such Intellectual Property to the Company and, at the request of and without charge to the Company, Employee will do all things deemed by the Company to be reasonably necessary to perfect title to the Intellectual Property in the Company and to assist in obtaining for the Company such patents, copyrights or other protection as may (or have previously) solely or jointly conceive or develop or reduce to practicebe provided under law and desired by the Company, including, without limitation, executing and signing any and all relevant applications, assignments, or cause other instruments. Employee further agrees to provide, at the Company’s request, declarations and affidavits and to give testimony, in depositions, hearings, or trials, in support of any of the Company’s rights hereunder. These obligations continue even after any termination of the employment relationship. In the event the Company is unable, after reasonable effort, to secure Employee’s signature on any document or documents needed to apply for or prosecute any patent, copyright or other right or protection, for any reason whatsoever, Employee hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as her agent and attorney-in-fact to act for and on her behalf to execute and file any such application or other document and to do all other lawfully permitted acts to further the prosecution and issuance of patents, copyrights, or similar protections thereon with the same legal force and effect as if executed by her.
(b) Employee acknowledges that all original works of authorship, including, without limitation, software, manuals and documentation, that have been or may be conceived or developed or reduced created by Employee during and within the scope of employment are and shall be “works-for-hire” and the sole property of the Company.
(c) Notwithstanding any provision of this Agreement, Employee understands and agrees that Employee is not being required to practiceassign, during and will not be deemed to have assigned, the Term of Employment, whether or not during regular working hours, provided they either following:
(i) any inventions that the Employee developed entirely on her own time without using the Company’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 business of any member of the Company GroupCompany’s business, or actual or demonstrably anticipated research or development of any member of the Company GroupCompany; or (ii2) result from or relate to any work performed by the Employee for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the CompanyInventions, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments developments and any copyrightsintangible interests and properties (i.e., patents, trademarkspatent applications, service marksintellectual property, database rightscopyrights, domain names, mask work rights, moral rightstrade secrets, and other intellectual property rights relating thereto trademarks) that Employee made prior to starting employment with the Company. To avoid any uncertainty, Employee agrees to set forth as an Exhibit to this Agreement, any inventions, developments and intangible interests that she owns or has an interest in any and all countries, including at the disclosure to the Company time of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyAgreement.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive Participant agrees that Executive Participant will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive Participant may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term Period of EmploymentServices, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive Participant further acknowledges that all Developments made by Executive Participant (solely or jointly with others) within the scope of and during the Term Period of Employment Services are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive Participant is, in part, compensated by ExecutiveParticipant’s Base Salarybase salary, director fees and/or consulting fees, as applicable, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive Participant hereby assigns to the Company, or its designee, all ExecutiveParticipant’s right, title, and interest throughout the world in and to any such Development.
(iib) Executive Participant agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive Participant further agrees that ExecutiveParticipant’s obligation to execute or cause to be executed, when it is in ExecutiveParticipant’s power to do so, any such instrument or papers shall continue after the termination of the Term Period of Employment Services until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive Participant for ExecutiveParticipant’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of ExecutiveParticipant’s mental or physical incapacity or unavailability for any other reason to secure ExecutiveParticipant’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive Participant hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as ExecutiveParticipant’s agent and attorney in fact to act for and in ExecutiveParticipant’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by meParticipant. Executive Participant hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive Participant now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Samples: Restrictive Covenant Agreement (ZoomInfo Technologies Inc.)
Assignment of Intellectual Property. (ia) Executive Holder agrees that Executive Holder will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive Holder may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during Holder’s employment with the Term of EmploymentCompany Group, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive Holder further acknowledges that all Developments made by Executive Holder (solely or jointly with others) within the scope of and during Holder’s employment with the Term of Employment Company Group are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive Holder is, in part, compensated by ExecutiveHolder’s Base Salarybase salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive Holder hereby assigns to the Company, or its designee, all ExecutiveHolder’s right, title, and interest throughout the world in and to any such Development.
(iib) Executive Xxxxxx agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive Xxxxxx further agrees that ExecutiveXxxxxx’s obligation to execute or cause to be executed, when it is in ExecutiveXxxxxx’s power to do so, any such instrument or papers shall continue after the termination of the Term term of Employment Xxxxxx’s employment with the Company Group until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive Holder for ExecutiveHolder’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of ExecutiveXxxxxx’s mental or physical incapacity or unavailability for any other reason to secure ExecutiveXxxxxx’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive Holder hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as ExecutiveHolder’s agent and attorney in fact to act for and in ExecutiveXxxxxx’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive Holder hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive Holder now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Samples: Restricted Stock Unit Award Agreement (MP Materials Corp. / DE)
Assignment of Intellectual Property. (ia) Executive agrees that Executive willFounder hereby irrevocably assigns, without additional compensation, promptly make full written disclosure transfers and conveys to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s his right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, title and interest in and to such Developmentsall patents and patent applications which relate to the Company’s proposed or current business, products or research and development, as set forth on Exhibit A hereto ( the “Intellectual Property”).
(b) Except as set forth in the Schedule of Exceptions attached as Exhibit B, Founder represents and warrants that (i) Founder is the owner of the entire right, title and interest in and to the Intellectual Property, (ii) Founder has the sole right and authority to enter into this Agreement and grant the rights hereunder, (iii) Founder has not previously granted any rights or licenses in the Intellectual Property, (iv) the Intellectual Property listed in Exhibit A constitutes all of the proprietary rights owned by Founder that are related to the Company’s business as presently conducted or contemplated to be conducted, including the design, manufacture, license and sale of all products and technology currently under development or in production, and (v) Founder does not own or have the right to license any intellectual property other Intellectual Property that is related to the conduct of the Company’s business that is not otherwise listed on Exhibit A.
(c) Founder agrees to execute any and all papers and documents, and take such other actions as are reasonably requested by the Company, to evidence, perfect, defend the foregoing assignment and fully implement the Company’s proprietary rights relating theretoin the subject matter assigned hereunder, such as obtaining and enforcing copyrights, patents or trademarks and to fully cooperate in the prosecution, enforcement and defense of such proprietary rights. Executive Founder [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If if the Company is unable because of Executive’s mental or physical incapacity or unavailability unable, for any other reason reason, to secure Executive’s signature signatures to apply for or to pursue any application for any United States patent, copyright, trademark or foreign patents or copyright registrations other proprietary right covering Developments or original works of authorship any Intellectual Property assigned to the Company as above, then Executive Founder hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executivethe Founder’s agent and attorney in fact attorney-in-fact, to act for and in ExecutiveFounder’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application forprosecution and issuance of patents, prosecutioncopyrights, issuance, maintenance, trademarks and transfer of letters patent or other registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives the Founder.
(d) Founder has listed in Exhibit C all inventions, original works of authorship, developments, improvements, and irrevocably quitclaims trade secrets which were made by Founder prior to employment with the Company (collectively, the “Prior Inventions”), which belong to Founder, which relate to the Company any Company’s proposed or current business, products or research and all claimsdevelopment, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights which are not assigned to the Company; or, if no such list is attached, Founder represents that there are no such inventions. In the event that any Prior Inventions are listed on Exhibit C, Founder hereby grants to Company a present, non-exclusive, royalty free, irrevocable, perpetual, world-wide license to make, have made, sublicense, modify, use and sell such Prior Invention as part of or in connection with the Company’s products and technology currently under development or in production.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure I hereby assign to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive my right, title, and interest in and to such Developmentsany and all inventions, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts and other intellectual property (and all Proprietary Rights with respect thereto) (collectively, “Intellectual Property”), whether or not patentable or registrable under patent, copyright or similar statutes, that were made or conceived or reduced to practice or learned by me, either alone or jointly with others, (i) at the direction of the Company, (ii) during the performance of my duties of employment, (iii) on Company time, (iv) using Company’s equipment, materials, supplies, facilities or Proprietary Information, or (v) that, at the time of conception, authorship, development, or reduction to practice of the Intellectual Property, relate to the business of the Company as conducted (or as proposed to be conducted) or the actual or demonstrably anticipated research or development of the Company, during the period of my employment with the Company. The only Intellectual Property excluded from this provision are those which are set forth in Exhibit A to this Agreement, or the assignment of which are prohibited pursuant to applicable law. I have attached, as Exhibit A, a list specifically describing all inventions, original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts, and other intellectual property that:
(i) I made, alone or jointly with others, prior to employment with Company;
(ii) belong to me, in which I have an ownership interest, or which are owned in whole or in part by another company, organization, or other entity of which I have an ownership interest; and
(iii) are not assigned to Company (collectively, “Retained Intellectual Property”); provided that if no such list is attached, I represent that there is no such Retained Intellectual Property. To preclude any possible uncertainty, I have also set forth on Exhibit A attached hereto a complete list of all inventions that I have, alone or jointly with others, conceived, developed, or reduced to practice or caused to be conceived, developed, or reduced to practice prior to commencement of my employment with the Company, in which I have assigned my ownership interest to a third party and that I wish to have excluded from the scope of this Agreement; provided that if no such list is attached, I represent that there are no such inventions. If disclosure of any such invention on Exhibit A would cause me to violate any prior confidentiality agreement, I understand that I am not to list such inventions in Exhibit A but am to inform the Company that all inventions have not been listed for that reason. All Intellectual Property assigned to the Company by this Section 4 is hereinafter referred to as above, then Executive hereby irrevocably designates and appoints the “Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the CompanyIntellectual Property.”
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive he will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time arise out of conception or reduction to practice of the invention to the business of any member of Executive’s employment with the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to reasonably assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract
Assignment of Intellectual Property. (ia) Executive agrees that Executive will, without additional compensation, promptly make full written disclosure I hereby assign to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time of conception or reduction to practice of the invention to the business of any member of the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, compensated by Executive’s Base Salary, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive my right, title, and interest in and to such Developmentsany and all inventions, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employment. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts and other intellectual property (and all Proprietary Rights with respect thereto) (collectively, “Intellectual Property”), whether or not patentable or registrable under patent, copyright or similar statutes, that were made or conceived or reduced to practice or learned by me, either alone or jointly with others, (i) at the direction of the Company, (ii) during the performance of my duties of employment, (iii) on Company time, (iv) using Company’s equipment, materials, supplies, facilities or Proprietary Information, or (v) that, at the time of conception, authorship, development, or reduction to practice of the Intellectual Property, relate to the business of the Company as conducted (or as proposed to be conducted) or the actual or demonstrably anticipated research or development of the Company, during the period of my employment with the Company. The only Intellectual Property excluded from this provision are those which are set forth in Exhibit A to this Agreement, or the assignment of which are prohibited pursuant to applicable law. I have attached, as Exhibit A, a list specifically describing all inventions, original works of authorship (including software source code), trade secrets, designs, developments, improvements, concepts, and other intellectual property that:
(i) I made, alone or jointly with others, prior to employment with Company;
(ii) belong to me, in which I have an ownership interest, or which are owned in whole or in part by another company, organization, or other entity of which I have an ownership interest; and
(iii) are not assigned to Company (collectively, "Retained Intellectual Property"); provided that if no such list is attached, I represent that there is no such Retained Intellectual Property. To preclude any possible uncertainty, I have also set forth on Exhibit A attached hereto a complete list of all inventions that I have, alone or jointly with others, conceived, developed, or reduced to practice or caused to be conceived, developed, or reduced to practice prior to commencement of my employment with the Company, in which I have assigned my ownership interest to a third party and that I wish to have excluded from the scope of this Agreement; provided that if no such list is attached, I represent that there are no such inventions. If disclosure of any such invention on Exhibit A would cause me to violate any prior confidentiality agreement, I understand that I am not to list such inventions in Exhibit A but am to describe such invention with as much specificity as possible without violating any prior agreement and state that additional information has been withheld for that reason. All Intellectual Property assigned to the Company by this Section 4 is hereinafter referred to as above“Company Intellectual Property.”
(b) If in the course of my employment with the Company, then Executive hereby irrevocably designates and appoints the Company incorporates into any Company product, process or machine any Retained Intellectual Property, I hereby grant and its duly authorized officers and agents as Executive’s agent and attorney in fact the Company shall have a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application formake, prosecutionhave made, issuancemodify, maintenancecreate derivative works of, improve, use, import, export, and transfer sell such Retained Intellectual Property as part of letters patent or registrations thereon in connection with the same legal force such product, process or machine. I agree to and effect as if originally executed by me. Executive do hereby waives and irrevocably quitclaims assign to the Company any and all claimsright, title, and interest in and to any and all modifications, improvements, and other derivative works made by or on behalf of Company to any nature whatsoeversuch Retained Intellectual Property that is licensed to Company pursuant to this Section 4, and thus any and all such modifications, improvements, and other derivative works are deemed Company Intellectual Property.
(c) I acknowledge that Executive all original works of authorship that are made by me (solely or jointly with others) during the term of my employment with the Company and that are within the scope of my employment and protectable by copyright (“Works”) are “works made for hire,” as that term is defined in the United States Copyright Act (17 U.S.C. § 101). If for any reason any such Works or any part thereof would not or cannot be considered a “work made for hire” under applicable law, I agree to and do hereby sell, assign, and transfer to Company, its successors and assigns, the entire right, title and interest in and to the copyright in such Work and any registrations and copyright applications relating thereto and any renewals and extensions thereof, and in and to all works based upon, derived from, or incorporating that Work, and in and to all income, royalties, damages, claims and payments now or hereafter have due or payable with respect thereto, and in and to all causes of action, either in law or in equity for past, present, or future infringement of any based on the copyrights, and in and to all proprietary rights assigned corresponding to the foregoing throughout the world. I hereby waive, as against Company, its successors, assigns and licensees, all moral rights which I have or acquire in respect of all such Works. I agree to enforce the moral rights as against others as directed by and at the cost of Company or its successor-in-title of the copyright in the Works.
(d) I acknowledge and agree that the Company is not obligated to commercialize any Company Intellectual Property, and that if I desire to independently commercialize any of said Company Intellectual Property, I must request and obtain a written license from the Company beforehand, which license request may be declined by the Company in its sole discretion.
Appears in 1 contract
Assignment of Intellectual Property. (i) Executive agrees that Executive he will, without additional compensation, promptly make full written disclosure to the Company, and will hold in trust for the sole right and benefit of the Company all developments, original works of authorship, inventions, concepts, know-how, improvements, trade secrets, and similar proprietary rights, whether or not patentable or registrable under copyright or similar laws, which Executive may (or have previously) solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the Term of Employment, whether or not during regular working hours, provided they either (i) relate at the time arise out of conception or reduction to practice of the invention to the business of any member of Executive’s employment with the Company Group, or actual or demonstrably anticipated research or development of any member of the Company Group; (ii) result from or relate to any work performed for any member of the Company Group; or (iii) are developed through the use of equipment, supplies, or facilities of any member of the Company Group, or any Confidential Information, or in consultation with personnel of any member of the Company Group (collectively referred to as “Developments”). Executive further acknowledges that all Developments made by Executive (solely or jointly with others) within the scope of and during the Term of Employment are “works made for hire” (to the greatest extent permitted by applicable law) for which Executive is, in part, is compensated by Executive’s Base Salarythe Company, unless regulated otherwise by law, but that, in the event any such Development is deemed not to be a work made for hire, Executive hereby assigns to the Company, or its designee, all Executive’s right, title, and interest throughout the world in and to any such Development.
(ii) Executive agrees to reasonably assist the Company, or its designee, at the Company’s expense, in every way to secure the rights of the Company Group in the Developments and any copyrights, patents, trademarks, service marks, database rights, domain names, mask work rights, moral rights, and other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments, recordations, and all other instruments that the Company shall deem necessary in order to apply for, obtain, maintain, and transfer such rights and in order to assign and convey to the Company Group the sole and exclusive right, title, and interest in and to such Developments, and any intellectual property and other proprietary rights relating thereto. Executive further agrees that Executive’s obligation to execute or cause to be executed, when it is in Executive’s power to do so, any such instrument or papers shall continue after the termination of the Term of Employment until the expiration of the last such intellectual property right to expire in any country of the world; provided, however, that the Company shall reimburse Executive for Executive’s reasonable expenses incurred in connection with carrying out the foregoing obligation and, following termination of employment of the Term of Employment, shall compensate Executive for Executive’s time incurred in connection with carrying out Executive’s obligations under this Section 6(c)(ii) following such termination of at an hourly rate based upon Executive’s Base Salary as of immediately prior to Executive’s termination of employmentobligation. If the Company is unable because of Executive’s mental or physical incapacity or unavailability for any other reason to secure Executive’s signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Developments or original works of authorship assigned to the Company as above, then Executive hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Executive’s agent and attorney in fact to act for and in Executive’s behalf and stead to execute and file any such applications or records and to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance, and transfer of letters patent or registrations thereon with the same legal force and effect as if originally executed by me. Executive hereby waives and irrevocably quitclaims to the Company any and all claims, of any nature whatsoever, that Executive now or hereafter have for past, present, or future infringement of any and all proprietary rights assigned to the Company.
Appears in 1 contract