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Prior Inventions Employment Agreement
I need a Prior Inventions Employment Agreement for a senior software engineer joining my AI startup in March 2025, who holds three existing patents for machine learning algorithms and wants to continue using them in personal projects while working for us.
1. Parties: Identification of the employer and employee, including their full legal names and addresses
2. Background: Context of the agreement, including the employment relationship and purpose of documenting prior inventions
3. Definitions: Key terms including 'Prior Inventions', 'Intellectual Property Rights', 'Confidential Information', and other relevant terms
4. Disclosure of Prior Inventions: Employee's obligation to disclose all relevant prior inventions and the process for such disclosure
5. Ownership of Prior Inventions: Confirmation of employee's ownership of prior inventions and reservation of rights
6. Company Rights: Scope of company's rights regarding prior inventions, including any licenses granted
7. Future Inventions: Clear distinction between prior inventions and future inventions created during employment
8. Confidentiality Obligations: Requirements for maintaining confidentiality of both prior inventions and company information
9. Assistance and Cooperation: Employee's obligations to assist with documentation and protection of inventions
10. Term and Survival: Duration of the agreement and provisions that survive employment termination
11. General Provisions: Standard clauses including governing law, amendments, severability, and entire agreement
1. Non-Competition: Restrictions on competing activities, used when the prior inventions are in the same field as the employer's business
2. Third Party Rights: Addressing any third-party rights or licenses in the prior inventions, used when prior inventions have existing licensing arrangements
3. Publication Rights: Rights to publish or present about prior inventions, relevant for academic or research-focused employees
4. Improvements to Prior Inventions: Handling of improvements made to prior inventions during employment, used when continued development is anticipated
5. Alternative Dispute Resolution: Mediation or arbitration procedures, optional but recommended for high-value intellectual property
6. Assignment Rights: Rights to assign the agreement, used for companies anticipating structural changes
1. Schedule A - List of Prior Inventions: Detailed listing of all prior inventions with descriptions, patent numbers, and registration details
2. Schedule B - Prior Invention Documentation: Copies or references to documentation proving ownership and development of prior inventions
3. Schedule C - Existing Licenses or Encumbrances: List of any existing licenses, agreements, or encumbrances affecting the prior inventions
4. Appendix 1 - Disclosure Form: Standard form for documenting and disclosing prior inventions
5. Appendix 2 - Certification: Employee certification of completeness and accuracy of prior invention disclosures
Authors
Technology
Research and Development
Pharmaceuticals
Biotechnology
Software Development
Engineering
Manufacturing
Telecommunications
Electronics
Academic and Research Institutions
Artificial Intelligence and Machine Learning
Industrial Design
Healthcare Technology
Clean Technology
Legal
Human Resources
Research and Development
Engineering
Innovation
Intellectual Property
Product Development
Technology
Scientific Research
Patent
Compliance
Software Engineer
Research Scientist
Chief Technology Officer
Product Developer
Research Engineer
Innovation Manager
Technical Architect
Principal Scientist
R&D Manager
Patent Engineer
Biotechnology Researcher
Industrial Designer
AI Developer
Systems Engineer
Research Director
Technical Lead
Senior Developer
Product Architect
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