Contractor IP Assignment Agreement

CONTRACTOR INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT

This Contractor Intellectual Property Assignment Agreement (this “Agreement”) is entered into as of [effectiveDate] (the “Effective Date”) by and between [companyName], a [companyState] [companyEntityType] (the “Company”), and [contractorName], [an individual / a [contractorState] [contractorEntityType]] (“Contractor”).

WHEREAS, Contractor has performed and/or will perform services for the Company consisting of [servicesDescription] (the “Services”), beginning on [workStartDate] (the “Start Date”); and

WHEREAS, the Company requires, as a condition of engaging Contractor, that the Company own all right, title and interest in and to the results of the Services;

NOW, THEREFORE, in consideration of [the fees payable to Contractor for the Services / the payment of $[considerationAmount]], the receipt and sufficiency of which are hereby acknowledged, the parties agree as follows:

1. Work Product. “Work Product” means all works of authorship, software, code, designs, documentation, data, inventions, discoveries, improvements, ideas, know-how, trademarks, domain names and other materials that Contractor creates, conceives, develops or reduces to practice, alone or jointly with others, in performing the Services or using the Company’s Confidential Information, at any time from and after the Start Date, whether or not patentable or registrable.

2. Assignment. Contractor hereby irrevocably assigns, transfers and conveys to the Company all of Contractor’s right, title and interest throughout the world in and to the Work Product and all intellectual property rights therein, including all copyrights, patents, patent applications, trade secrets, trademarks and moral rights. To the extent any moral rights in the Work Product cannot be assigned under applicable law, Contractor hereby waives, and agrees never to assert, such rights against the Company or its successors and licensees.

3. Prior Inventions. Contractor has listed on Exhibit A all inventions, works and other intellectual property that Contractor created before the Start Date, that Contractor owns or has an interest in, and that relate to the Company’s business (“Prior Inventions”). If no items are listed, Contractor represents that there are none. If Contractor incorporates any Prior Invention into any Work Product, Contractor hereby grants the Company a non-exclusive, perpetual, irrevocable, worldwide, fully paid-up and royalty-free license, with the right to sublicense, to make, use, sell, reproduce, modify, distribute and otherwise exploit such Prior Invention as part of or in connection with such Work Product.

4. Third-Party and Open Source Materials. Contractor shall not incorporate into any Work Product any third-party materials, or any open source software licensed under terms that would require the Company to disclose, license or distribute any of its source code, without the Company’s prior written approval.

5. Further Assurances. During and after the term of the Services, Contractor shall, at the Company’s request and expense, execute all documents and take all other actions reasonably necessary to evidence, perfect, register, maintain, enforce or defend the Company’s rights in the Work Product. If the Company is unable, after reasonable effort, to obtain Contractor’s signature on any such document, Contractor hereby irrevocably appoints the Company and its authorized officers as Contractor’s attorney-in-fact, which appointment is coupled with an interest, to execute and file such document on Contractor’s behalf.

6. Confidentiality. Contractor shall hold in strict confidence, and shall not use except in performing the Services or disclose to any third party, any non-public information of the Company (“Confidential Information”). Confidential Information does not include information that is or becomes public through no fault of Contractor, that Contractor already knew without a duty of confidentiality, or that Contractor receives from a third party who is free to share it. Contractor may disclose Confidential Information when required by law or court order, after giving the Company prompt notice where the law allows. Upon completion of the Services or upon the Company’s earlier request, Contractor shall promptly return or destroy all Confidential Information and all copies of the Work Product in Contractor’s possession.

7. Excluded Inventions. This Agreement does not assign any invention that Contractor develops entirely on Contractor’s own time without using the Company’s equipment, supplies, facilities or trade secret information, unless the invention (a) relates, at the time it is conceived or reduced to practice, to the Company’s business or actual or demonstrably anticipated research or development, or (b) results from any work Contractor performs for the Company. If Contractor is ever treated as an employee under applicable law, Contractor’s assignment obligations are limited to the extent required by California Labor Code Section 2870 or any similar law of the state where Contractor works.

8. Notice of Immunity. Under the Defend Trade Secrets Act of 2016 (18 U.S.C. § 1833(b)), an individual will not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that is made (a) in confidence to a federal, state or local government official, either directly or indirectly, or to an attorney, solely for the purpose of reporting or investigating a suspected violation of law, or (b) in a complaint or other document filed in a lawsuit or other proceeding, if the filing is made under seal. An individual who files a lawsuit for retaliation for reporting a suspected violation of law may disclose the trade secret to the individual’s attorney and use the trade secret information in the court proceeding, if the individual files any document containing the trade secret under seal and does not disclose the trade secret except under court order. Nothing in this Agreement prevents Contractor from reporting a possible violation of law to a government agency.

9. Representations and Warranties. Contractor represents and warrants that (a) the Work Product is and will be Contractor’s original work, except for materials approved in writing under Section 4; (b) Contractor has full right and authority to enter into this Agreement and to make the assignment in Section 2; and (c) Contractor’s execution and performance of this Agreement do not and will not breach any agreement with, or obligation owed to, any third party, including any current or former employer or client.

10. Independent Contractor. Contractor is an independent contractor and not an employee, partner or agent of the Company. This Agreement supplements any services agreement between the parties; in the event of any conflict between this Agreement and any such services agreement regarding ownership of the Work Product, this Agreement shall control.

11. Miscellaneous. This Agreement shall be governed by the laws of the State of [governingLawState], without regard to its conflict of laws principles. This Agreement shall survive the completion or termination of the Services. This Agreement may be amended or waived only in a writing signed by both parties. If any provision of this Agreement is held unenforceable, the remaining provisions shall remain in full force and effect. This Agreement may be executed in counterparts and delivered electronically.

IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective Date.

[COMPANYNAME]

By: ______________________________

Name: [companySignerName]

Title: [companySignerTitle]

CONTRACTOR

______________________________

[contractorName]

EXHIBIT A

LIST OF PRIOR INVENTIONS

_____ No inventions or improvements

_____ Additional sheets attached

Contractor initials: ________