Re: "Prior Inventions" on employment contract

I just got one of these last week.  This is why there are lawyer jokes.  If
a contract has a series of wheretofore's, notwithstanding's, or the
equivalent beware.  In our business the longer we work the more we know.
After 26 years I have some smattering of experience that I bring to every
job.  That's why I get hired in the first place.  We come to the job with
knowledge and understanding and we learn more in the course of the work.
Oftentimes we get hired to work on new stuff that nobody has ever worked on.
Learning is core to the work.

I would be very cautious about signing such a document.  I have three types
of clients:  those that need no contract (when can you do it?), those that
can work with the one pager (my preference), and those that need my 20 pager
that's filled with the abovementioned (whoops!) insidious words.

If your utilities are an issue consider granting them a non-exclusive,
royalty free license to USE the tools if they are incorporated into the end
product you produce for them.  Itemize them in Sch B and (very good idea)
incorporate copyright info in source and objects.

Every notice how contracts written by "them" only protect "them" and not
you?

Insist that clauses referring to proprietary rights, confidentiality,
no-liability, termination, and hold harmless are reciprocal.  What's good
for the goose is good for the gander is the germane phrase I think.

"Company recognizes that Agency is comprised of a mature professional group
of IT professionals who come to Company with many intrinsic creations,
inventions, developments, etc. Nothing in 8.x Ownership shall be construed
as granting Company any rights in intellectual property already owned by
Agency."

If they really want you they will respect you.

Jerry

Jerome Draper, Trilobyte Software Systems, since 1976
Network and Connectivity Specialist -- Mac's, LAN's, PC's, and iSeries
Representing Synapse, Nlynx, Perle, CLI, Intermate and Others .....
(415) 457-3431 - (415) 258-1658fax - http://www.trilosoft.com


----- Original Message -----
From: Dan <dbcemid@yahoo.com>
To: <midrange-l@midrange.com>
Sent: Monday, December 09, 2002 8:04 AM
Subject: "Prior Inventions" on employment contract


> If this belongs on a different list, please let me know.
>
> I have a cd-rom full of programmer utilities that I've developed over
> the years.  I intend to fully protect my rights and ownership of these
> utilities.  I freely share the _use_ of these utilities in the shops
> where I have worked.  I am getting ready to sign a new employment
> contract and it has a section for "prior inventions":
>
> ----------------------------------
> Employee agrees that (s)he has no ideas or inventions or copyrights
> made or conceived prior to the beginning date of Employee's employment
> with COMPANY that relate in any way to COMPANY's Business or the
> business of the Client except for such as are disclosed on Exhibit "B",
> which Exhibit (entitled "Prior Inventions") shall be signed by COMPANY
> if any such inventions shall exist.  Any and all inventions, ideas or
> copyrights of Employee disclosed or made available to COMPANY during
> the term of this Agreement shall be disclosed on a non-confidential
> basis and Employee agrees that COMPANY shall have an irrevocable and
> free right to use such inventions, ideas and copyrights in any way
> whatsoever except for such valid patent rights as Employee may have
> obtained prior to the date hereof which are disclosed on Exhibit "B".
> ----------------------------------
>
> The aforementioned cd-rom was created prior to my employment with this
> company.  Is it enough to claim "the entire contents of this cd-rom",
> or should I print a file listing, or ... what?
>
> TIA, Dan