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I am being asked to sign an non-disclosure agreement and one of the sections focuses on the ownership of any "works" (defined broadly to include everything from ideas to tangible products) which I might produce while employed.

The first two paragraphs in the section state very clearly that everything I produce belongs to the employing company.

The third paragraph seems to grant me the right to produce non-competitive products as long as I do it on my own time and do not use the company's equipment or trade secrets.

As an budding entrepreneur, I will not sign this agreement unless this third paragraph overpowers the statements of the previous two.

Unfortunately, the third paragraph begins with a phrase that I don't know how to interpret...

"Notwithstanding anything to the contrary contained in this Agreement, any provision of this Agreement which provides for me to assign any of my rights to a Work shall not apply to any invention developed on my own time without using equipment, supplies, facilities or trade secrets..."

So here is my question...

Does the phrase "Notwithstanding anything to the contrary contained in this Agreement" mean...

a). "Subordinate to everything else contained in this Agreement..."

...or...

b). "Overriding everything else contained in this Agremeent..."

...or...

c). something else entirely?

  • It could mean different thing in different contexts. "Notwithstanding" isn't necessarily used the same way across the board. – HDE 226868 Aug 3 '15 at 12:00
  • Given just the quote you have, it means b). However it may be worth asking a lawyer to advice you. It might only cost $100 (provided you can do it via email, rather than face to face). – Martin Bonner supports Monica Aug 29 '16 at 13:31
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Notwithstanding in this case takes its ordinary meaning - "despite":

Despite anything to the contrary contained in this Agreement, any provision of this Agreement which provides for me to assign any of my rights to a Work shall not apply to any invention developed on my own time without using equipment, supplies, facilities or trade secrets…

Without having the text of the rest of the relevant parts of the contract, my initial interpretation is that the effect of this, is that you would not need to assign your rights to Works produced in your own time without connection to your paid employment.

Also, if this was subordinate to the other clauses you mentioned, then it would have little or no effect.

Finally, the general legal principle is that works produced in your own time with no connection to your employment (resources, knowledge or otherwise) are not assigned, unless specifically stated.

That is, the contract would generally explicitly state that works produced in your own time with no reliance on your employment are assigned to the Employer.

However, such a term is almost certainly unreasonable and could be challenged in court if the employer ever attempted to enforce it.

  • Thanks. I wish I could share the rest of the contract here, but if I end up signing it, that would be breaking its' NDA nature. I appreciate your interpretation while remaining pessimistic about its permutations. "unless a provision states otherwise" sounds very subordinate and the previous two paragraphs clearly state otherwise. Guess I will have to ask them to revise the section to clearer verbiage, and see if that flushes out any hidden meaning. +1 for a very quick and helpful reply. – Henry Taylor Aug 3 '15 at 6:19
  • @HenryTaylor "unless a provision states otherwise" does not appear anywhere other than your comment. I don't understand what you are worrying about. I am almost certain they will refuse to revise the contract (the wording looks perfectly reasonable to me). If you are really concerned, get a paid-for lawyer to look at. He can look at the whole thing (without breaking the NDA), and then reassure you that it is fine. It shouldn't cost much ~$100? – Martin Bonner supports Monica Sep 21 '18 at 12:24

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