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Prior Inventions Employment Agreement Template for India

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Key Requirements PROMPT example:

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.

Document background
The Prior Inventions Employment Agreement is essential when hiring employees who have developed intellectual property before their employment, particularly in technology and innovation-driven sectors in India. This agreement becomes crucial when onboarding employees who bring existing patents, innovations, or intellectual property to their new role. It helps prevent future disputes by clearly documenting pre-existing intellectual property and establishing boundaries between prior inventions and work-related innovations. The agreement ensures compliance with Indian intellectual property laws, including the Patents Act, 1970, and provides protection for both employer and employee interests. It's particularly relevant in situations where employees might use or build upon their prior inventions during their new employment.
Suggested Sections

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

Optional Sections

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

Suggested Schedules

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

Alex Denne

Head of Growth (Open Source Law) @ Ƶ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

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Relevant Industries

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

Relevant Teams

Legal

Human Resources

Research and Development

Engineering

Innovation

Intellectual Property

Product Development

Technology

Scientific Research

Patent

Compliance

Relevant Roles

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

Industries








Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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