Common use of Invention Assignment Clause in Contracts

Invention Assignment. (a) The Consultant and Merchant agree that the Company will have exclusive ownership in all ideas, discoveries, inventions, formulae, algorithms, techniques, processes, know how, trade secrets and other intellectual property, including all expressions of such intellectual property in tangible form, which are used in or relate to the Company’s business and which the Consultant, Merchant or the Consultant’s employees conceives of or makes for the Company or its subsidiaries or affiliates during the performance of the Services (together, “Inventions”) and that the Consultant or Merchant will promptly disclose the Inventions to the Company in writing. This will be the case, whether or not an Invention is: (i) capable of being protected by copyright, patent, industrial design, trade ▇▇▇▇ or other similar legal protection, (ii) conceived or made by the Consultant, Merchant or the Consultant’s employees during or outside the Consultant’s, Merchant’s or the Consultant’s employees’ time spent providing the Services as set out in section 5(a) herein, or (iii) conceived or made by the Consultant or Merchant alone or jointly with others. However, it is acknowledged and agreed that this section will not apply to any Invention developed by the Consultant, Merchant or the Consultant’s employees outside the time spent providing the Services as set out in section 5(a) herein if such Invention: (i) was not within the scope of the Services, (ii) was developed without the use of Confidential Information, and (iii) was developed without the use of any of the Company’s corporate resources. (b) The Consultant and Merchant hereby assigns to the Company all rights, title and interest the Consultant, Merchant or the Consultant’s employees may now or in the future have in and to the Inventions and waives the Consultant’s and Merchant’s moral rights, and causes the author(s) to waive his, her or their moral rights, to any and all copyrights subsisting in the Inventions. If required by the Company, the Consultant and Merchant also agree to sign any applications or other documents the Company may reasonably request: (i) to obtain or maintain patent, copyright, industrial design, trade ▇▇▇▇ or ether similar protection for the Inventions, (ii) to transfer ownership of the Inventions to the Company, and (iii) to assist the Company in any proceeding necessary to protect and preserve the Inventions. The Company will pay for all expenses associated with preparing and filing such documents.

Invention Assignment. (a) The Consultant and Merchant agree that the Company will have exclusive ownership in all ideas, discoveries, inventions, formulae, algorithms, techniques, processes, know how, trade secrets and other intellectual property, including all expressions of such intellectual property in tangible form, which are used in or relate to the Company’s business and which the Consultant, Merchant or the Consultant’s or his or her employees conceives of or makes for the Company or its subsidiaries or affiliates during the performance of the Services (together, “Inventions”) and that the Consultant or Merchant will promptly disclose the Inventions to the Company in writing. This will be the case, whether or not an Invention is: (i) capable of being protected by copyright, patent, industrial design, trade ▇▇▇▇ or other similar legal protection, (ii) conceived or made by the Consultant, Merchant or the Consultant’s employees during or outside the Consultant’s, Merchant’s or the Consultant’s employees’ time spent providing the Services as set out in section 5(a5 (a) herein, or (iii) conceived or made by the Consultant or Merchant alone or jointly with others. However, it is acknowledged and agreed that this section will not apply to any Invention developed by the Consultant, Merchant or the Consultant’s employees outside the time spent providing the Services as set out in section Section 5(a) herein if such Invention: (i) was not within the scope of the Services, (ii) was developed without the use of Confidential Information, and (iii) was developed without the use of any of the Company’s corporate resources. (b) The Consultant and Merchant hereby assigns to the Company all rights, title and interest the Consultant, Merchant or the Consultant’s employees may now or in the future have in and to the Inventions and waives the Consultant’s and or Merchant’s moral rights, and causes the author(s) to waive his, her or their moral rights, to any and all copyrights subsisting in the Inventions. If required by the Company, the Consultant and Merchant also agree to sign any applications or other documents the Company may reasonably request: (i) to obtain or maintain patent, copyright, industrial design, trade ▇▇▇▇ or ether other similar protection for the Inventions, (ii) to transfer ownership of the Inventions to the Company, and (iii) to assist the Company in any proceeding necessary to protect and preserve the Inventions. The Company will pay for all expenses associated with preparing and filing such documents.the

Invention Assignment. Any Proprietary Works (a) The Consultant and Merchant agree that the Company will have exclusive ownership in all ideasmeaning inventions, developments, designs, discoveries, inventionsinnovations, formulaebusiness methods, algorithmsimprovements, techniquesideas, processesoriginal works of authorship, know howdatabase creations, trade secrets and other forms of legally protectable intellectual property) that you conceive, including create, or develop in the course of your employment or as a result of your work for the Company (alone or with others, during or after regular working hours) will be considered “Work Product” that is the property of the Company, and the Company will hold all expressions of such intellectual property rights (“IP Rights”) in tangible form, which are used in or the Work Product. Work Product will include all Proprietary Works that either (a) relate to the Company’s business and which the Consultant, Merchant or the Consultant’s employees conceives of or makes for the Company or its subsidiaries actual or affiliates during the performance of the Services (together, “Inventions”) demonstrably anticipated research and that the Consultant or Merchant will promptly disclose the Inventions to the Company in writing. This will be the case, whether or not an Invention is: (i) capable of being protected by copyright, patent, industrial design, trade ▇▇▇▇ or other similar legal protection, (ii) conceived or made by the Consultant, Merchant or the Consultant’s employees during or outside the Consultant’s, Merchant’s or the Consultant’s employees’ time spent providing the Services as set out in section 5(a) hereindevelopment, or (iiib) conceived are developed or made by discovered with the Consultant or Merchant alone or jointly with others. However, it is acknowledged and agreed that this section will not apply to any Invention developed by the Consultant, Merchant or the Consultant’s employees outside the time spent providing the Services as set out in section 5(a) herein if such Invention: (i) was not within the scope of the Services, (ii) was developed without the use assistance of Confidential Information, and (iii) was developed without the use of any tools, equipment, personnel, or other resources of the Company’s corporate resources. , or (bc) The Consultant and Merchant are suggested by, related to, or results from any work performed by you or others for the Company. You hereby assigns assign to the Company all of your rights, title and interest the Consultant, Merchant or the Consultant’s employees may now or in the future have in and to all such Work Product; provided, however, that this assignment shall be limited so that it does not require or create any assignment of an invention that cannot be assigned through an agreement under controlling law. Specifically, you acknowledge notice of Wash. Rev. Code, Title 49 RCW: Labor Regulations, Chapter 49.44.140 and further acknowledge and understand that the Inventions obligations set forth in this Paragraph 7.b. of this Letter Agreement will not require the assignment of your rights in an invention for which no equipment, supplies, facility, or trade secret information of Company was used and waives which was developed entirely on your own time, unless (a) the Consultant’s and Merchant’s moral rights, and causes the author(s) to waive his, her or their moral rights, to any and all copyrights subsisting in the Inventions. If required by the Company, the Consultant and Merchant also agree to sign any applications or other documents the Company may reasonably request: invention relates (i) directly to obtain the business of Company, or maintain patent, copyright, industrial design, trade ▇▇▇▇ or ether similar protection for the Inventions, (ii) to transfer ownership the Company’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by you for Company. All Work Product shall be considered “work made for hire” and all copyrights in the Work Product available under the Copyright Act of 1976 will be owned by the Inventions Company from moment of creation or conception forward without the need for further action by you. IP Rights assigned to and owned by the Company in Work Product through this Letter Agreement shall include all rights of ownership, control, and benefit throughout the world, including, without limitation, rights of inventors and authors with respect to patent, patent applications and registrations, copyrights, sui generis database rights, trademark rights, all rights relating to the protection of computer software (including, without limitation, both source code and object code), trade secret rights, rights of attribution or control and moral rights or droit moral (which you waive if they cannot be transferred to the Company), rights to royalties or other economic benefit, rights to derivative works, and rights to claims or causes of action arising out of or related to any past, present, or future infringement or misappropriation related to the Work Product. It is agreed that Work Products shall automatically vest in, and be the exclusive property of, the Company immediately on the creation thereof, regardless of the stage of completion. However, to the extent necessary and requested, you agree that during and after your assignment you will cooperate in executing any documents, providing testimony, and otherwise performing any acts the Company requires from you (iiiwith reasonable approved expenses covered by Company) to assist ensure the Company retains, throughout the world, all IP Rights in Work Product. This Letter Agreement shall supplement and not replace or diminish any proceeding necessary prior, subsequent, or additional written Work Product related agreements that you may have enter into (or be required to protect enter into) based on your position with the Company (such as those related to research and preserve the Inventions. The Company will pay for all expenses associated with preparing and filing such documentsdevelopment, engineering, or software development positions).

Invention Assignment. (ai) The Consultant Each Seller agrees that all inventions, modifications, innovations, discoveries or other developments related directly or indirectly to the Company's business (collectively "Inventions") made by such Seller while employed by the Company prior to or after the Closing shall be the property of the Company and Merchant agree that the Company will shall have the exclusive proprietary rights and ownership in them. (ii) Each Seller will make full and prompt disclosure to the Company of all ideas, discoveries, inventions, formulae, algorithms, techniques, processes, know how, trade secrets and other intellectual property, including all expressions of such intellectual property in tangible formInventions, which are used in created, made, conceived or relate reduced to the Company’s business and which the Consultant, Merchant practice by such Seller or the Consultant’s employees conceives of or makes for jointly with others while employed by the Company prior to or its subsidiaries or affiliates during after the performance of the Services (together, “Inventions”) and that the Consultant or Merchant will promptly disclose the Inventions to the Company in writing. This will be the caseClosing, whether or not an during normal working hours or on the premises of the Company, subject to California Labor Code Section 2870 to the extent applicable. (iii) Each Seller agrees to assign and does hereby assign to the Company (or any person or entity designated by the Company) all of such Seller's right, title and interest in and to all Inventions and all related patents, patent applications, copyrights and copyright applications. This Section 8.2(a) shall not apply to Inventions which do not relate to the present or planned business or research and development of the Company and which are made and conceived by such Seller not during normal working hours, not on the Company's premises and not using the Company's tools, devices, equipment or Confidential Information. Each Seller understands that, to the extent this Agreement shall be construed in accordance with the laws of any state (such as California Labor Code Section 2870 to the extent applicable) which precludes a requirement in any agreement to assign certain classes of Inventions, this Section 8.2(a) shall be interpreted not to apply to any Invention is: which a court rules and/or the Company agrees falls within such classes. Each Seller also hereby waives all claims to moral or equitable rights in any Inventions. (iiv) capable Each Seller agrees to cooperate fully with the Company, at the Company's sole expense, with respect to the procurement, maintenance and enforcement of being protected by copyrightcopyrights, patentpatents and other intellectual property rights (both in the United States and foreign countries) relating to Inventions. Each Seller shall, industrial designat the Company's expense, trade sign all papers, including, without limitation, copyright applications, patent applications, declarations, oaths, formal assignments, assignments of priority rights, and powers of attorney, which are reasonably necessary or desirable in order to protect the Company's rights and interests in any Invention. Each Seller further agrees that if the Company is unable, after reasonable effort, to secure the signature of such Seller on any such papers, any executive officer of the Company shall be entitled to execute any such papers as the agent and the attorney-in-fact of such Seller, and such Seller hereby irrevocably designates and appoints each executive officer of the Company as such Seller's agent and attorney-in-fact to execute any such papers on such Seller's behalf, and to take any and all actions as the Company may deem necessary or desirable in order to protect its rights and interest in any Invention, under the conditions described in this sentence. (v) So long as TransMedica, Inc. and its affiliates are not engaged in the present or planned business or research and development of the Company from time to time, Buyer and the Company acknowledge that ▇▇▇▇ or other similar legal protection, (ii) conceived or made by the Consultant, Merchant or the Consultant’s employees during or outside the Consultant’s, Merchant’s or the Consultant’s employees’ time spent providing the Services as set out in section 5(a) herein, or (iii) conceived or made by the Consultant or Merchant alone or jointly with others. However, it is acknowledged and agreed that this section will not apply to any Invention developed by the Consultant, Merchant or the Consultant’s employees outside the time spent providing the Services as set out in section 5(a) herein if such Invention: (i) was not within the scope of the Services, (ii) was developed without the use of Confidential Information, and (iii) was developed without the use of any of the Company’s corporate resources. (b) The Consultant and Merchant hereby assigns to the Company all rights, title and interest the Consultant, Merchant or the Consultant’s employees may now or in the future have in and to the Inventions and waives the Consultant’s and Merchant’s moral rights, and causes the author(s) to waive his, her or their moral rights, to any and all copyrights subsisting in the Inventions. If required by the Company, the Consultant and Merchant also agree to sign any applications or other documents the Company may reasonably request: (i) to obtain or maintain patent, copyright, industrial design, trade ▇▇▇▇▇▇'▇ or ether similar protection work for the Inventions, (ii) to transfer ownership such entities shall not constitute a violation of the Inventions to the Company, and (iii) to assist the Company in any proceeding necessary to protect and preserve the Inventions. The Company will pay for all expenses associated with preparing and filing such documentsthis Section 8.2(a).

Invention Assignment. (ai) The Consultant Executive will make full and Merchant agree that prompt disclosure to the Company will have exclusive ownership in of all ideasinventions, discoveries, inventionsdesigns, developments, methods, modifications, improvements, processes, algorithms, data, databases, computer programs, research, formulae, algorithms, techniques, processestrade secrets, know howgraphics or images, trade secrets and audio or visual works and other works of authorship, and other intellectual property, including all expressions of such intellectual property in tangible form, which are used in or relate to the Company’s business and which the Consultant, Merchant or the Consultant’s employees conceives of or makes for the Company or its subsidiaries or affiliates during the performance of the Services works-in-process (together, collectively “InventionsDevelopments”) and that the Consultant or Merchant will promptly disclose the Inventions to the Company in writing. This will be the case, whether or not an Invention is: (i) capable of being protected by copyrightpatentable or copyrightable, patentthat are created, industrial designmade, trade ▇▇▇▇ or other similar legal protection, (ii) conceived or made reduced to practice by the Consultant, Merchant or the Consultant’s employees during or outside the Consultant’s, Merchant’s or the Consultant’s employees’ time spent providing the Services as set out in section 5(a) herein, or Executive (iii) conceived or made by the Consultant or Merchant alone or jointly with others) or under Executive’s direction during the period of Executive’s employment. However, it Executive acknowledges that all work performed by Executive is acknowledged and agreed that this section will not apply to any Invention developed by the Consultant, Merchant or the Consultant’s employees outside the time spent providing the Services as set out in section 5(a) herein if such Invention: (i) was not within the scope of the Services, (ii) was developed without the use of Confidential Informationon a “work for hire” basis, and (iii) was developed without Executive hereby does assign and transfer and, to the use of extent any of the Company’s corporate resources. (b) The Consultant such assignment cannot be made at present, will assign and Merchant hereby assigns transfer, to the Company and its successors and assigns all rightsof Executive’s right, title and interest the Consultant, Merchant or the Consultant’s employees may now or in the future have in and to all Developments that (I) relate to the Inventions and waives business of the Consultant’s and Merchant’s moral rightsCompany or any customer of, and causes supplier to or business partner of the author(sCompany or any of the products or services being researched, developed, manufactured or sold by the Company or which may be used with such products or services; or (II) result from tasks assigned to waive his, her or their moral rights, to any and all copyrights subsisting in the Inventions. If required me by the Company; or (III) result from the use of premises or personal property (whether tangible or intangible) owned, the Consultant and Merchant also agree to sign any applications leased or other documents contracted for by the Company may reasonably request: (i) to obtain or maintain patent“Company-Related Developments”), copyrightand all related patents, industrial designpatent applications, trade ▇▇▇▇ or ether similar protection for the Inventionstrademarks and trademark applications, copyrights and copyright applications, sui generis database rights and other intellectual property rights in all countries and territories worldwide and under any international conventions (“Intellectual Property Rights”). (ii) This Agreement does not obligate Executive to transfer ownership assign to the Company any Development that, in the sole judgment of the Inventions to the Company, reasonably exercised, is developed entirely on Executive’s own time and (iii) does not relate to assist the business efforts or research and development efforts in which, during the period of Executive’s employment, the Company actually is engaged or reasonably would be engaged, and does not result from the use of premises or equipment owned or leased by the Company. However, Executive will also promptly disclose to the Company any such Developments for the purpose of determining whether they qualify for such exclusion. Executive understands that to the extent this Agreement is required to be construed in accordance with the laws of any state which precludes a requirement in an employee agreement to assign certain classes of inventions made by an employee, this Section will be interpreted not to apply to any invention that a court rules and/or the Company agrees falls within such classes. Executive also hereby waives all claims to any moral rights or other special rights that Executive may have or accrue in any proceeding necessary to protect and preserve the Inventions. The Company will pay for all expenses associated with preparing and filing such documentsCompany-Related Developments.

Invention Assignment. (a) The Consultant 3.1 Employee has attached hereto, as EXHIBIT A, a list describing all inventions, original works of authorship, developments, improvements, and Merchant agree that trade secrets which were made by him or her prior to his or her employment with the Company will have exclusive ownership in all ideas, discoveries, inventions, formulae, algorithms, techniques, processes, know how, trade secrets and other intellectual property, including all expressions of such intellectual property in tangible form(collectively referred to as "Prior Inventions"), which are used in belong to him or her, which relate to the Company hereunder; or, if no such list is attached, Employee represents that there are no such Prior Inventions. If in the course of his or her employment with the Company’s business , Employee incorporates into a Company product or process a Prior Invention owned by him or her in which Employee has an interest, the Company is hereby granted and which the Consultantshall have a nonexclusive, Merchant or the Consultant’s employees conceives royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use and sell such Prior Invention as part of or makes for in connection with such product or process, subject to the Company or its subsidiaries or affiliates during the performance rights of the Services (together, “Inventions”) and that the Consultant or Merchant any prior third party obligations as listed in EXHIBIT A. 3.2 Employee will promptly disclose the Inventions to the Company in writing. This will be the casewriting all formulas, processes, techniques, tests data, improvements and inventions, original works of authorship, developments, concepts, trade secrets, whether or not an Invention is: (i) capable of being protected by copyrightpatentable or registrable under copyright or similar laws, patentwhich Employee makes, industrial designconceives, trade ▇▇▇▇ learns or other similar legal protectionreduces to practice, (ii) conceived or made by the Consultant, Merchant or the Consultant’s employees during or outside the Consultant’s, Merchant’s or the Consultant’s employees’ time spent providing the Services as set out in section 5(a) herein, or (iii) conceived or made by the Consultant or Merchant either alone or jointly with others. However, it is acknowledged during the period of employment and agreed that this section will not apply which are related to any Invention developed or useful in the Company's business, and which result from tasks assigned by the Consultant, Merchant Company or the Consultant’s employees outside the time spent providing the Services from use of Company Confidential Information or facilities (collectively referred to as set out in section 5(a"Inventions"). 3.3 Employee further acknowledges that all original works of authorship which are made by him or her (solely or jointly with others) herein if such Invention: (i) was not within the scope of and during the Services, (ii) was developed without period of his or her employment with the use of Company and which are protectible by copyright are "works made for hire," as that term is defined in the United States Copyright Act and are subject to assignment as set forth above. 3.4 Employee agrees that all Confidential Information, all Inventions and (iii) was developed without all patent and other rights related thereto are the use of any sole property of the Company’s corporate resources. (b) The Consultant , and Merchant Employee hereby assigns to the Company all rights, title and interest the Consultant, Merchant any rights Employee may have or the Consultant’s employees may now acquire in such Confidential Information or in the future have in and to the Inventions and waives the Consultant’s and Merchant’s moral rights, and causes the author(s) to waive his, her or their moral rights, to any and all copyrights subsisting in the Inventions. If required by the Company, the Consultant and Merchant also agree Employee further agrees to sign any applications or other documents assist the Company may reasonably request: (iat its expense) in every proper way (including execution of patent applications and other documents) to obtain or maintain patent, copyright, industrial design, trade ▇▇▇▇ or ether similar protection for the Inventions, (ii) to transfer ownership of the Inventions to and enforce patents on and otherwise secure the Company, and (iii) 's rights in any Inventions. Employee agrees that Employee's obligation to assist the Company in obtaining and enforcing any proceeding necessary to protect copyrights, patents, mask work rights or other intellectual property rights relating thereto in any and preserve all countries will continue beyond the Inventions. The termination of Employee's employment, but the Company will pay compensate Employee at reasonable rates for the assistance Employee actually provides at the Company's request after such termination. Employee hereby irrevocably appoints the Company and its duly authorized officers and agents as Employee's agents and attorneys-in-fact to execute and file all expenses associated documents and perform all other lawful acts related to the foregoing. 3.5 Employee agrees that all Confidential Information, documents, equipment and other physical property furnished to or produced by Employee in connection with preparing Employee's employment are the sole property of the Company, and filing Employee will promptly deliver all such documentsproperty to the Company at its request and (whether or not the Company so requests) upon the termination of employment with Company. 3.6 In the event of Employee's termination of employment with the Company, Employee agrees to sign and deliver the "Termination Certification" attached hereto as EXHIBIT B.