Common use of Assignment of Inventions to Luminex Clause in Contracts

Assignment of Inventions to Luminex. 5.8.1 Luminex shall own all right, title and interest (including all patent, copyright, trademark, trade secret, database rights, and all other rights of any sort throughout the world) in and to any and all inventions (whether or not patentable) works of authorship, works, developments, discoveries, methods, processes, designs, ideas, concepts, information, improvements and/or other work product made, caused to be made, conceived, implemented or reduced to practice, in whole or in part, whether alone or acting with others, by Executive during the term of Executive’s employment with Luminex (collectively, “Inventions”). Executive agrees to promptly disclose all Inventions to Luminex, and Executive agrees to hold in confidence and not disclose any Invention to any third party. Executive further agrees that all Inventions are “works made for hire” within the meaning of the Copyright Act of 1976, as amended, are the sole and exclusive property of Luminex, and Executive shall have no right to exercise any economic rights to any Invention. Executive hereby irrevocably assigns, transfers, and sets over absolutely, without further consideration, to Luminex any and all rights, title, and interest in and to all Inventions; provided however, that this Section shall not apply to any Invention for which no equipment, supplies, facilities, intellectual property, trade secrets or Confidential Information of Luminex were used and that was developed entirely on Executive’s own time, unless the Invention (i) relates to Luminex’s current or contemplated business or activities; (ii) relates to Luminex’s actual or demonstrably anticipated research or development; or (iii) results from or relates to any work performed by Executive for Luminex. To the extent Executive uses or discloses his confidential or proprietary information or intellectual property that does not constitute Inventions when acting within the scope of Executive’s employment or otherwise on behalf of Luminex, Luminex will have, and Executive hereby grants to Luminex, a perpetual, irrevocable, worldwide, royalty-free, non-exclusive, sublicensable right and license to exploit, exercise and otherwise use such confidential or proprietary information and/or intellectual property. 5.8.2 Executive agrees to perform, upon the reasonable request of Luminex, during or after Executive’s employment with Luminex, such further acts as may be necessary or desirable to confirm, transfer, perfect, and defend Luminex’s ownership of any Invention, including without limitation: (a) executing, acknowledging, and delivering any requested affidavits and documents of assignment and conveyance; (b) assisting in the preparation, prosecution, procurement, maintenance and enforcement of all copyrights, patents and/or other rights with respect to any Invention in any country; (c) providing testimony in connection with any proceeding affecting the right, title or interest of Luminex in any Invention; and/or (d) performing any other acts Luminex deems necessary to carry out the purposes of this Agreement. Luminex shall reimburse all reasonable, actual, out-of-pocket expenses incurred by Executive at Luminex’s request in connection with the foregoing. In the event that Luminex requests Executive’s signature under clause 5.8.2(a) - (c) above and Executive fails or refuses to do so within a reasonable time, then it shall be deemed that Executive has irrevocably designated and appointed Luminex as Executive’s agent and attorney-in-fact, coupled with an interest, to act for and on Executive’s behalf to execute and file any document and to do all other lawfully permitted acts to further the foregoing with the same legal force and effect as if executed by Executive; provided, however, that this grant of power by Executive to Luminex shall not authorize Luminex to undertake in Executive’s name any improper, illegal, fraudulent, misleading, or unethical act.