ASSIGNMENT OF INVENTIONS AGREEMENT
Exhibit 10.26
THIS ASSIGNMENT OF INVENTIONS AGREEMENT (this “Agreement”) is executed and made effective as
of the day of , 200 by and between TomoTherapy Incorporated, a Wisconsin
corporation (the “Company”), and the undersigned employee (“Employee”).
RECITALS
The Company is engaged in the highly-competitive business of developing and selling products
and services that deliver and/or support the imaging, planning, delivery, or verification of
radiation therapy and/or radiation surgery to patients with cancer and other diseases treated with
radiation therapy and/or radiation surgery. Employee desires to be employed by or continued to be
employed by the Company, and acknowledges that he or she will be required to use personal
intellectual skills on behalf of the Company and that it is reasonable and fair that the fruits of
such skills should inure to the sole benefit of the Company.
Employment or continued employment with the Company is contingent upon Employee’s execution of
this Agreement. In consideration for being offered employment or continued employment with the
Company, and/or for other consideration, such as stock options, salary increases or the like,
Employee accepts this Agreement.
NOW, THEREFORE, in consideration of the mutual understandings, covenants and agreements set
forth herein and in the recitals, the receipt and sufficiency of which is hereby acknowledged, IT
IS AGREED AS FOLLOWS:
1. Proprietary Rights, Inventions and New Ideas.
(a) Company Ownership. All right, title and interest in and to all Inventions,
including but not limited to all registerable and patentable rights that may subsist
therein, shall be held and owned solely by the Company, and where applicable, all Inventions
shall be considered works made for hire. Employee shall xxxx all Inventions with the
Company’s copyright or other proprietary notice as directed by the Company and shall take
all actions deemed necessary by the Company to protect the Company’s rights therein. In the
event that the Inventions shall be deemed not to constitute works made for hire, or in the
event that Employee should otherwise, by operation of law, be deemed to retain any rights to
any Inventions, Employee hereby assigns to the Company, without further consideration, all
right, title and interest in and to each and every such Inventions.
(b) Maintenance of Records. Employee agrees to keep and maintain adequate and
current written records of all Inventions and their development made by Employee (solely or
jointly with others) during such time that Employee is employed by the Company (the “Period
of Employment”). These records will be in the form of notes, sketches, drawings, and any
other format that may be specified by the Company. These records will be available to and
remain the sole property of the Company at all times.
(c) Determination of Inventions. Employee agrees that all information and
records pertaining to any Intellectual Property that Employee does not believe to be
Inventions, but that are conceived, developed, or reduced to practice by the
Company, by Employee alone or with others during the Period of Employment and for
six (6) months thereafter, shall be disclosed promptly by Employee to the Company (such
disclosure to be received in confidence). The Company shall examine such information to
determine if in fact the Intellectual Property is to be considered Inventions subject to
this Agreement.
(d) Access. Because of the difficulty of establishing when any Inventions are
first conceived by Employee, or whether they result from Employee’s access to Confidential
Information or the Company Materials, Employee agrees that any Inventions shall be deemed to
have resulted from Employee’s access to the Company Materials if (i) it grew out of or
resulted from Employee’s work with the Company or is related to the business of the Company,
or (ii) it is made, used, sold, exploited or reduced to practice, or an application for
patent, trademark, copyright or other proprietary protection is
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filed thereon, by Employee or with Employee’s significant aid, within six (6) months
after the Period of Employment.
(e) Employee Assistance; Authorization. Employee shall assist the Company in
every lawful way to obtain, and from time to time enforce, patents, copyrights or other
rights or registrations on any Inventions. In the event the Company is unable, after
reasonable effort, to secure Employee’s signature on any patent, copyright or other
analogous protection relating to Inventions, whether because of his physical or mental
incapacity or for any other reason whatsoever, Employee hereby irrevocably designates and
appoints the Company and its duly authorized officers and agents as Employee’s agent and
attorney-in-fact, to act for and on Employee’s behalf to execute and file any such
application, applications or other documents and to do all other lawfully permitted acts to
further the prosecution, issuance, and enforcement of letters patent, copyright or other
analogous rights or protections thereon with the same legal force and effect as if executed
by Employee. Employee’s obligation to assist the Company in obtaining and enforcing patents
and copyrights for Inventions in any and all countries shall continue beyond the Period of
Employment, but the Company agrees to compensate Employee at a reasonable rate after the
Period of Employment for time actually spent by Employee at the Company’s request on such
assistance.
(f) No Prior Exclusions. Employee acknowledges that there are no currently
existing ideas, processes, inventions, discoveries, marketing or business ideas or
improvements that Employee desires to exclude from the operation of this Agreement. There is
no other contract to assign inventions, trademarks, copyrights, ideas, processes,
discoveries or other intellectual property that is now in existence between Employee and any
other person (including any business or governmental entity).
2. Representations and Warranties. Employee represents and warrants (i) that
Employee has no obligations, legal or otherwise, inconsistent with the terms of this Agreement or
with Employee’s undertaking or continuance of a relationship with the Company, and (ii) that
Employee has not entered into and will not enter into any agreement (whether oral or written) in
conflict with this Agreement. Employee’s representations, warranties, and obligations contained in
this Agreement shall survive after the Period of Employment.
3. Change in Employment Status. The covenants of this Agreement shall remain in force
in the event that Employee’s employment status changes within the Company or changes from
being employed by the Company to being employed by an existing or future subsidiary or
affiliate of the Company. In the event of a change to such subsidiary and affiliate then the
subsidiary or affiliate shall have the same rights and the same protections, without further
documentation or agreement, as enjoyed by the company under this Agreement.
4. Injunctive Relief; Breach. Employee acknowledges that failure to carry out any
obligation under or a breach of any provision of this Agreement will constitute immediate and
irreparable damage to the Company that cannot be fully and adequately compensated in money damages
and that will warrant preliminary and other injunctive relief, an order for specific performance,
and other equitable relief. Such remedy, however, shall be cumulative and nonexclusive and shall
be in addition to any other remedy to which the parties may be entitled.
5. Assignment. Neither this Agreement nor any rights or duties of Employee hereunder
shall be assignable by Employee, and any such purported assignment shall be void. The Company may,
however, assign all or any of its rights hereunder.
6. Entire Agreement; Amendment. This Agreement constitutes the complete understanding
between Employee and the Company on this subject and may not be modified or amended,
except by writing and executed by a duly authorized representative of the Company and by Employee.
This Agreement is intended to be the final, complete, and exclusive statement of the terms of the
parties’ agreements regarding these subjects and supersedes all other prior and contemporaneous
agreements and statements on these subjects. This Agreement is effective for Employee’s entire
Period of Employment, even if such period commenced prior to the date of this Agreement.
7. Definitions. All capitalized terms not defined in the text of this Agreement, have
the following meanings:
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(a) “The Company Materials” means the Company’s memoranda, notes,
records, drawings, sketches, models, maps, customer lists, research results, data, formulae,
specifications, inventions, processes, equipment or other materials.
(b) “Intellectual Property” means all information and records pertaining to any idea,
process, trademark, service xxxx, invention, technology, computer hardware or software,
original work of authorship, design, formula, discovery, product, and all improvements,
know-how, rights, and claims related to the foregoing.
(c) “Inventions” means any and all ideas, processes, trademarks, service marks,
inventions, designs, technologies, computer hardware or software, original works of
authorship, formulas, discoveries, patents, copyrights, copyrightable works, products,
marketing and business ideas, and all improvements, know-how, data, rights, and claims
related to the foregoing that, whether or not patentable, which are conceived, developed or
created that (i) relate to the Company’s current or demonstrably contemplated business or
activities, (ii) relate to the Company’s actual or demonstrably anticipated research or
development, (iii) result from any work performed by Employee for the Company, (iv) involve
the use of the Company’s equipment, supplies, facilities or trade secrets, (v) result from
or are suggested by any work done by the Company or at the Company’s request, or any
projects specifically assigned to Employee, or (vi) result from Employee’s access to any of
the Company Materials.
8. Waiver of Breach. The waiver by either party of the breach of any provision of
this Agreement shall not operate or be construed as a waiver of any subsequent breach by either
party. Any waiver by either party must be in writing and signed by a representative who has the
authority to bind such party.
9. Invalidity of any Provision. The provisions of this Agreement are severable, it
being the intention of the parties hereto that should any provision hereof be invalid or
unenforceable, such invalidity or unenforceability of any provisions shall not effect the remaining
provisions hereof, but the same shall remain in full force and effect as if such invalid or
unenforceable provision or provisions were omitted.
10. Governing Law; Jurisdiction and Venue; Construction. This Agreement shall be
governed by the internal laws of the State of Wisconsin. The parties irrevocably consent to the
sole and exclusive jurisdiction and venue in the appropriate state or federal court in Wisconsin.
This Agreement shall be construed without regard to any rules of construction concerning the
draftsman hereof.
11. Notices. Any notice, request, consent or approval required or permitted to be
given under this Agreement or pursuant to law shall be sufficient if it is in writing, and if and
when it is hand delivered, faxed, or sent by regular mail, with postage prepaid, to Employee’s
residence (as noted in the Company’s records), or to the Company’s principal office, as
the case may be.
12. Employee Acknowledgment. Employee acknowledges that Employee has read and
understands this Agreement, and that Employee has entered into it freely and voluntarily and based
on Employee’s own judgment and not on any representations or promises other than those contained in
this Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date first
written above.
| TomoTherapy Incorporated | ||||||||
| By: | ||||||||
| Title: | ||||||||
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