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I know some companies want on boarding employees to disclose to them any invention or innovation they have made. If you do not do this, can the company claim the invention or innovation as their own? What exactly counts, for example if I have some open source projects on Github (or have a pet project of any kind) should this be disclosed?

Disclosure of Prior Innovations. I have identified on Exhibit A attached hereto all Innovations applicable to the business of ExampleInc or relating in any way to ExampleInc’s business or demonstrably anticipated research and development or business, which were conceived, reduced to practice, created, derived, developed, or made by me prior to my employment with ExampleInc, whether solely or jointly with others and I represent that such list is complete. I represent that I have no rights in any Innovations specified in Exhibit A. If there is no such list on Exhibit A, I represent that I have neither conceived, reduced to practice, created, derived, developed or made any Innovations at the time of signing this Agreement.

I'm in Canada but the governing law is the US.

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    This is quite a tricky area. Disclosing a prior invention, if done improperly, can prevent you or anyone else from patenting it and can deprive it of trade secret prevention, bringing the invention into the public domain. You really ought to consult a patent lawyer before taking a step like this one, if you want to retain economic value for your invention. Of course, if you have no interest in economically benefiting from your prior inventions you could disclose absolutely everything you can think of whether or not it strictly qualifies.
    – ohwilleke
    Apr 18 '18 at 21:00
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    @ohwilleke I notice they use the word 'innovations' instead of inventions. Does this include things that are not just patentable, for example things that copyright protects?
    – user17600
    Apr 19 '18 at 3:43
  • idk. I suspect that the term "innovations" is simply intended to be broad. I don't think it is a term of art.
    – ohwilleke
    Apr 19 '18 at 3:47
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Please consult with an IP attorney if a clause like this is in an Employment contract.

I represent that I have no rights in any Innovations specified in Exhibit A.

This is the line that probably has the biggest impact.

I think what the company is trying to do is make sure that you don't have a product that they could use then turn around and sue them for infringement if something they have is similar to what you have made.

However, this seems like it would also stop all patent applications you may have. They could use everything you have written so far, like what is stored in an open repository.

If you do not do this, can the company claim the invention or innovation as their own?

No (probably). They couldn't get a patent on the exact same subject matter without you signing something else. This clause is not an assignment (document that transfers rights).

Essentially, the way this is worded would imply that you would have no actions against that company based off of infringement of anything you have written. But it doesn't limit it to just claims against ExampleInc.


Anyone confronted with a similar clause should contact an IP attorney ASAP.

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