Common use of Documents of Assignment Clause in Contracts

Documents of Assignment. 71 At the Employer’s request and expense, both during and subsequent to Executive’s employment under this 69 In Tennessee, the enforceability of the inventions clauses in this Section 10 is a matter of common law. However, in California, Illinois, Minnesota, North Carolina, and Washington, for example, statutory provisions are applicable. See CAL. LAB. CODE §§ 2870, 2871 (2008); 765 ILL. COMP. STAT. 1060/2 (2009); MINN. STAT. § 181.78 (2008); N.C. GEN. STAT. § 66-57.1 (2008); WASH REV. CODE § 49.44.140 (2008). 70 This provision assumes that Executive has already disclosed to the Employer, in connection with the negotiation and execution of the Asset Purchase Agreement, any and all inventions, discoveries, and improvements, directly or indirectly related to the Seller’s business, whether conceived, made, or developed solely by Executive or jointly with others during the period of Executive’s employment with the Seller and that any desired restrictions on those inventions, discoveries, and improvements are handled elsewhere. 71 “Employment agreements requiring an employee to assign to the employer rights to inventions designed or conceived during the period of employment have been upheld The determining factor of whether assignment-of-rights-agreements are enforceable seems to be one of reasonableness.” Revere Transducers, Inc. v. Deere & Co., ▇▇▇ ▇.▇.▇▇ 751, 761-62 (Iowa 1999); see also ▇▇▇▇▇▇▇▇▇-▇▇▇▇ Co. ▇. ▇▇▇▇▇▇▇▇, 542 A.2d 879, 886, (N.J. 1988) (“[C]ontracts requiring an employee to assign to the employer inventions designed or conceived during the period of employment are valid.”). An obligation on the part of Executive to assign inventions, discoveries and improvements to the Employer may be implied under certain circumstances where an express covenant does not exist. The Colorado Court of Appeals summarizes: If an employee’s job duties include the responsibility for inventing or for solving a particular problem that requires invention, any invention created by that employee during the performance of those responsibilities belongs to the employer. Hence, such an employee is bound to assign to the employer all rights to the invention. This is so because, under these circumstances, the employee has produced only that which he was employed to produce, and the courts will find an implied contract obligation to assign any rights to the employer.