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- edits for clarity and flow throughout 

- added a should have known standard as further movement on balance of interests discussed in #38 and in the initial PR comment above
- Exhibit A moved to standalone documentation to make the agreement more adaptable
- removed grant to use name as included in material Company can use; deemed unnecessary
- added duty to not use or disclose to Company anything that you're required not to (to avoid muddying Company IP; note this is _not_ a duty to keep Company materials confidential, removed in earlier commits because almost always covered by other agreements)
- added survivorship clause (if any terms found invalid, others remain in effect)
- further README edits to better reflect v2
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Justin Colannino 2020-10-13 16:00:48 -07:00 коммит произвёл Mike Linksvayer
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Balanced_Employee_IP_Agreement.md
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# Balanced Employee Intellectual Property Agreement 2.0.0
This BALANCED EMPLOYEE INTELLECTUAL PROPERTY AGREEMENT is between person named below and [COMPANY NAME], a [State of Incorporation] corporation ("Company").
This BALANCED EMPLOYEE INTELLECTUAL PROPERTY AGREEMENT is between the person named below and [COMPANY NAME], a [State of Incorporation] corporation ("Company").
**What is this?** This is the Company's Intellectual Property Agreement ("Agreement"). If you've worked in the technology space before, there's a good chance that you've run across one or more of these in the past. This document is the official, entire and exclusive agreement on what intellectual property ("IP") is yours, and what belongs to the Company. "IP" includes concepts, designs, developments, discoveries, ideas, improvements, inventions, trade secrets, trademarks, and works of authorship.
**What is this?** This is the Company's Intellectual Property Agreement ("Agreement"). If you've worked in the technology space before, there's a good chance that you've run across one or more of these in the past. This document is the official, entire and exclusive agreement on what intellectual property ("IP") is yours, and what belongs to the Company. "IP" includes concepts, designs, developments, discoveries, ideas, improvements, inventions, patents, trade secrets, trademarks, copyrights, and works of authorship.
**What is this not?** This document only concerns IP ownership and licensing. Please also refer to the Company employee handbook, your contract, and other policies on security, confidentiality, acting in the Company's best interest, releasing and maintaining Company open source projects, and other topics related to IP and information and the Company's business. Check with the Company's legal department ("Legal") for any situation not clearly and fully addressed by Company policies.
@ -10,31 +10,32 @@ This BALANCED EMPLOYEE INTELLECTUAL PROPERTY AGREEMENT is between person named b
The Company also believes that it's important to be clear on what it doesn't own. The Company doesn't want you looking over your shoulder every time you work on something personal or worrying that the Company will someday seize your open source non-lethal mousetrap simulation software. In other words, the Company isn't interested in appropriating your personal projects.
**Read this.** Please read this document and be sure you understand it before you sign it. Due to legal risk and corporate obligations, the Company cannot, by and large, negotiate its terms. If you feel you have a particular circumstance that keeps you from signing, please let Legal know. And, of course, you're always free and encouraged to get your own legal counsel to explain anything you're not clear on.
**Read this.** Please read this document and be sure you understand it before you sign it. Due to issues of scale, fairness, and consistency, the Company cannot, by and large, negotiate its terms. If you feel you have a particular circumstance that keeps you from signing, please let Legal know. And, of course, you're always free and encouraged to get your own legal counsel to explain anything you're not clear on.
Cool? Then, by signing this Agreement, and as a condition of your employment, you agree to the following:
1. **What the Company owns.** The Company owns any IP ("Company IP") that you create, or help create, during the term of your employment or contract work, _within the scope of your employment or contract_. This is regardless of the time of day you did the work or whether or not you did it using your own equipment. Your compensation for creating Company IP is your regular salary or pay. The Company IP is work made for hire, but to the extent Company doesn’t own the rights automatically, you hereby grant and assign, and will grant and assign, to the Company all rights and interests in all Company IP.
1. **What the Company owns.** The Company owns any IP ("Company IP") that you create, or help create, during the term of your employment or contract work, _within the scope of your employment or contract_. This is regardless of the time of day you did the work or whether or not you did it using your own equipment. Your compensation for creating Company IP is your regular salary or pay. The Company IP is work made for hire, but to the extent Company doesn't own the rights automatically, you hereby grant and assign, and will grant and assign, to the Company all rights and interests in all Company IP.
2. **What the Company doesn't own.** If you create IP outside the scope of your employment or contract, the Company doesn't own it. This is true regardless of the computer you use to develop your IP, including the one furnished to you by the Company.
2. **What the Company doesn't own.** If you create IP outside the scope of your employment or contract or before or after your employment or contract ("Your IP"), the Company doesn't own it. This is true regardless of the computer you use to develop your IP, including the one furnished to you by the Company.
The Company also doesn't own IP excluded by laws such as those listed in Exhibit A. You acknowledge you have reviewed Exhibit A and have read those laws applicable to you.
The Company also doesn't own IP excluded by laws applicable to your employment.
3. **License to Company for your IP.** In some cases, the Company may need rights to IP you create outside of your job. It’s still yours, of course, but in the following circumstances, you grant the Company a non-exclusive, irrevocable, fully paid-up, royalty-free, perpetual, sublicensable, transferable, worldwide license to use your personally-owned IP without restriction in any way or implementation, in modified form, or as is, by itself, or incorporated into a project, product, or service ("License"):
3. **License to Company for Your IP.** In some cases, the Company may need rights to Your IP. It's still yours, of course, but in the following circumstances (a) or (b), you grant the Company a non-exclusive, irrevocable, fully paid-up, royalty-free, perpetual, sublicensable, transferable, worldwide license to use Your IP without restriction
("License"):
(a) If you agree to the use of your IP – such as IP you created prior to working for the Company – in a Company project, product or service;
(a) If you know or should know about the use of Your IP in a Company project, product, service, or internal systems and agree or do not object to that use; or
(b) For any IP that you create, or help create during the term of your employment or contract work, _outside the scope of your employment or contract_, but only if it relates to the Company's business, operations, or actual or demonstrably anticipated research or development.
If you include your name in any material in which the Company has rights under this Agreement, such as in a copyright notice or a comment in code or documentation, then the License covers the rights associated with that use of your name as well.
(b) If Your IP is created during the term of your employment or contract work and Your IP relates to the Company's business, operations, or actual or demonstrably anticipated research or development.
4. **Check with Legal on using non-Company IP.** When the Company relies on a license to use non-Company IP (such as IP you own or that was created by others and submitted to an open source project), Legal needs to be clear that the license is adequate. You agree to follow Company policies and procedures for the Company's use of non-Company IP.
5. **Check with Legal on your contributions to non-Company projects.** The Company recognizes that you may be engaged in work that requires you to submit Company IP to entities other than the Company, such as open source projects used by the Company. Please make sure that Legal is aware of what you're working on so that Legal can help with any licensing issues. If anyone asks you to sign a contribution agreement, you should check with Legal before doing so.
6. **No conflicts.** You agree that you don't have any outstanding agreements or obligations that conflict with those in this Agreement, and that you won't enter into conflicting agreements in the future.
6. **No conflicts.** You agree that you don't have any outstanding agreements or obligations that conflict with those in this Agreement, and that you won't enter into conflicting agreements in the future. You also agree that you will not use or disclose to Company anything that you are required to keep confidential, and will continue to honor any valid prior non-disclosure, proprietary rights, or other contractual agreements you have with anyone else.
7. **Cooperation.** The Company might someday need to show the work that went into the development of IP that it uses or has used, or to make government filings to establish that it owns the IP or has rights to it. To help in those situations, you agree to maintain all records relating to the development of any Company IP, and, if the Company asks, to provide those records to the Company. You authorize the Company to act on your behalf (as your agent and attorney-in-fact) in securing all rights related to Company IP. You agree to help the Company secure or defend its rights in Company IP or IP under the License in Section 3, including after you leave the Company. For your help after you leave the company, the Company will compensate you at a reasonable rate.
7. **Cooperation.** The Company might someday need to show the work that went into the development of IP that it uses or has used, or to establish that it owns the IP or has rights to it. To help in those situations, you agree to maintain all records relating to the development of any Company IP, and, if the Company asks, to provide those records to the Company. You authorize the Company to act on your behalf (as your agent and attorney-in-fact) in securing all rights related to Company IP and your IP licensed to Company under this agreement. You agree to help the Company secure or defend its rights in Company IP or IP under the License in Section 3, including after you leave the Company. For your help after you leave the company, the Company will compensate you at a reasonable rate.
8. **Survivorship.** If any terms of this Agreement are found invalid or unenforceable by any court, agency, or arbiter with jurisdiction over this Agreement, the remaining terms will survive with full effect.
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---
## Exhibit A: Laws Concerning Employment Agreements and Intellectual Property Assignment
### United States
#### California
<http://leginfo.legislature.ca.gov/faces/codes_displayText.xhtml?division=3.&chapter=2.&lawCode=LAB&article=3.5.>
> 2870\. (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either:
> (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or
> (2) Result from any work performed by the employee for the employer.
> (b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and is unenforceable.
> (Amended by Stats. 1991, Ch. 647, Sec. 5.)
>
> 2871\. No employer shall require a provision made void and unenforceable by Section 2870 as a condition of employment or continued employment. Nothing in this article shall be construed to forbid or restrict the right of an employer to provide in contracts of employment for disclosure, provided that any such disclosures be received in confidence, of all of the employee’s inventions made solely or jointly with others during the term of his or her employment, a review process by the employer to determine such issues as may arise, and for full title to certain patents and inventions to be in the United States, as required by contracts between the employer and the United States or any of its agencies.
> (Added by Stats. 1979, Ch. 1001.)
>
> 2872\. If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870. In any suit or action arising thereunder, the burden of proof shall be on the employee claiming the benefits of its provisions.
> (Added by Stats. 1979, Ch. 1001.)
#### Delaware
<http://delcode.delaware.gov/title19/c008/index.shtml#805>
> § 805 Employee's right to certain inventions.
>
> Any provision in an employment agreement which provides that the employee shall assign or offer to assign any of the employee's rights in an invention to the employee's employer shall not apply to an invention that the employee developed entirely on the employee's own time without using the employer's equipment, supplies, facility or trade secret information, except for those inventions that:
>
> (1) Relate to the employer's business or actual or demonstrably anticipated research or development; or
> (2) Result from any work performed by the employee for the employer.
>
> To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.
>
> 64 Del. Laws, c. 257, § 1; 70 Del. Laws, c. 186, § 1.;
#### Illinois
<http://www.ilga.gov/legislation/ilcs/ilcs3.asp?ActID=2238>
> (765 ILCS 1060/1) (from Ch. 140, par. 301)
> Sec. 1. This Act shall be known and may be cited as the "Employee Patent Act".
> (Source: P.A. 83-493.)
>
> (765 ILCS 1060/2) (from Ch. 140, par. 302)
> Sec. 2. Employee rights to inventions - conditions). (1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.
> (2) An employer shall not require a provision made void and unenforceable by subsection (1) of this Section as a condition of employment or continuing employment. This Act shall not preempt existing common law applicable to any shop rights of employers with respect to employees who have not signed an employment agreement.
> (3) If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.
> (Source: P.A. 83-493.)
>
> (765 ILCS 1060/3) (from Ch. 140, par. 303)
> Sec. 3. This Act takes effect upon becoming a law.
> (Source: P.A. 83-493.)
#### Kansas
<http://www.ksrevisor.org/statutes/chapters/ch44/044_001_0030.html>
> 44-130. Employment agreements assigning employee rights in inventions to employer; restrictions; certain provisions void; notice and disclosure. (a) Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless:
> (1) The invention relates to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or
> (2) the invention results from any work performed by the employee for the employer.
> (b) Any provision in an employment agreement which purports to apply to an invention which it is prohibited from applying to under subsection (a), is to that extent against the public policy of this state and is to that extent void and unenforceable. No employer shall require a provision made void and unenforceable by this section as a condition of employment or continuing employment.
> (c) If an employment agreement contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer shall provide, at the time the agreement is made, a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless:
> (1) The invention relates directly to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or
> (2) the invention results from any work performed by the employee for the employer.
> (d) Even though the employee meets the burden of proving the conditions specified in this section, the employee shall disclose, at the time of employment or thereafter, all inventions being developed by the employee, for the purpose of determining employer and employee rights in an invention.
> History: L. 1986, ch. 186, § 1; July 1.
#### Minnesota
<https://www.revisor.mn.gov/statutes?id=181.78>
> 181.78 AGREEMENTS; TERMS RELATING TO INVENTIONS.
> Subdivision 1. Inventions not related to employment. Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
> Subd. 2. Effect of subdivision 1. No employer shall require a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
> Subd. 3. Notice to employee. If an employment agreement entered into after August 1, 1977 contains a provision requiring the employee to assign or offer to assign any of the employee's rights in any invention to an employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer.
> History: 1977 c 47 s 1; 1986 c 444
#### Nevada
<https://www.leg.state.nv.us/nrs/NRS-600.html#NRS600Sec500>
> NRS 600.500  Employer is sole owner of patentable invention or trade secret developed by employee.  Except as otherwise provided by express written agreement, an employer is the sole owner of any patentable invention or trade secret developed by his or her employee during the course and scope of the employment that relates directly to work performed during the course and scope of the employment.
> (Added to NRS by 2001, 942; A 2003, 2832)
#### North Carolina
<http://www.ncleg.net/EnactedLegislation/Statutes/HTML/ByArticle/Chapter_66/Article_10A.html>
> Article 10A.
>
> Inventions Developed by Employee.
>
> § 66-57.1. Employee's right to certain inventions.
> Any provision in an employment agreement which provides that the employee shall assign or offer to assign any of his rights in an invention to his employer shall not apply to an invention that the employee developed entirely on his own time without using the employer's equipment, supplies, facility or trade secret information except for those inventions that (i) relate to the employer's business or actual or demonstrably anticipated research or development, or (ii) result from any work performed by the employee for the employer. To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this section. (1981, c. 488, s. 1.)
>
> § 66-57.2. Employer's rights.
> (a) An employer may not require a provision of an employment agreement made unenforceable under G.S. 66-57.1 as a condition of employment or continued employment. An employer, in an employment agreement, may require that the employee report all inventions developed by the employee, solely or jointly, during the term of his employment to the employer, including those asserted by the employee as nonassignable, for the purpose of determining employee or employer rights.
> (b) An employer's ownership of an employee's invention, discovery, or development that has or becomes vested in the employer by contract or by operation of law shall not be subject to revocation or rescission in the event of a dispute between the employer and employee concerning payment of compensation or benefits to the employee, subject to any contrary provision in the employee's written employment agreement. The foregoing provision shall not apply where the employee proves that the employer acquired ownership of the employee's invention, discovery, or development fraudulently.
> (c) If required by a contract between the employer and the United States or its agencies, the employer may require that full title to certain patents and inventions be in the United States. (1981, c. 488, s. 1; 2016-114, s. 4.)
#### Utah
<http://le.utah.gov/xcode/Title34/Chapter39/34-39.html>
> Chapter 39
> Employment Inventions Act
>
> 34-39-1 Citation of act.
> This act is known as the “Employment Inventions Act.”
>
>
> Enacted by Chapter 217, 1989 General Session
>
> 34-39-2 Definitions.
> As used in this chapter:
> (1) “Employment invention” means any invention or part thereof conceived, developed, reduced to practice, or created by an employee which is:
> (a) conceived, developed, reduced to practice, or created by the employee:
> (i) within the scope of his employment;
> (ii) on his employer’s time; or
> (iii) with the aid, assistance, or use of any of his employer’s property, equipment, facilities, supplies, resources, or intellectual property;
> (b) the result of any work, services, or duties performed by an employee for his employer;
> (c) related to the industry or trade of the employer; or
> (d) related to the current or demonstrably anticipated business, research, or development of the employer.
> (2) “Intellectual property” means any and all patents, trade secrets, know-how, technology, confidential information, ideas, copyrights, trademarks, and service marks and any and all rights, applications, and registrations relating to them.
>
> Enacted by Chapter 217, 1989 General Session
>
> 34-39-3 Scope of act -- When agreements between an employee and employer are enforceable or unenforceable with respect to employment inventions -- Exceptions.
> (1) An employment agreement between an employee and his employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is:
> (a) created by the employee entirely on his own time; and
> (b) not an employment invention.
> (2) An agreement between an employee and his employer may require the employee to assign or license, or to offer to assign or license, to his employer any or all of his rights and intellectual property in or to an employment invention.
> (3) Subsection (1) does not apply to:
> (a) any right, intellectual property or invention that is required by law or by contract between the employer and the United States government or a state or local government to be assigned or licensed to the United States; or
> (b) an agreement between an employee and his employer which is not an employment agreement.
> (4) Notwithstanding Subsection (1), an agreement is enforceable under Subsection (1) if the employee’s employment or continuation of employment is not conditioned on the employee’s acceptance of such agreement and the employee receives a consideration under such agreement which is not compensation for employment.
> (5) Employment of the employee or the continuation of his employment is sufficient consideration to support the enforceability of an agreement under Subsection (2) whether or not the agreement recites such consideration.
> (6) An employer may require his employees to agree to an agreement within the scope of Subsection (2) as a condition of employment or the continuation of employment.
> (7) An employer may not require his employees to agree to anything unenforceable under Subsection (1) as a condition of employment or the continuation of employment.
> (8) Nothing in this chapter invalidates or renders unenforceable any employment agreement or provisions of an employment agreement unrelated to employment inventions.
>
> Enacted by Chapter 217, 1989 General Session
#### Washington
<http://app.leg.wa.gov/RCW/default.aspx?cite=49.44.140>
> RCW 49.44.140
>
> Requiring assignment of employee's rights to inventions—Conditions.
> (1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
> (2) An employer shall not require a provision made void and unenforceable by subsection (1) of this section as a condition of employment or continuing employment.
> (3) If an employment agreement entered into after September 1, 1979, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work preformed [performed] by the employee for the employer.
>
> [ 1979 ex.s. c 177 § 2.]

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## Laws Concerning Employment Agreements and Intellectual Property Assignment
### United States
#### California
<http://leginfo.legislature.ca.gov/faces/codes_displayText.xhtml?division=3.&chapter=2.&lawCode=LAB&article=3.5.>
> 2870\. (a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either:
> (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or
> (2) Result from any work performed by the employee for the employer.
> (b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is against the public policy of this state and is unenforceable.
> (Amended by Stats. 1991, Ch. 647, Sec. 5.)
>
> 2871\. No employer shall require a provision made void and unenforceable by Section 2870 as a condition of employment or continued employment. Nothing in this article shall be construed to forbid or restrict the right of an employer to provide in contracts of employment for disclosure, provided that any such disclosures be received in confidence, of all of the employee’s inventions made solely or jointly with others during the term of his or her employment, a review process by the employer to determine such issues as may arise, and for full title to certain patents and inventions to be in the United States, as required by contracts between the employer and the United States or any of its agencies.
> (Added by Stats. 1979, Ch. 1001.)
>
> 2872\. If an employment agreement entered into after January 1, 1980, contains a provision requiring the employee to assign or offer to assign any of his or her rights in any invention to his or her employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention which qualifies fully under the provisions of Section 2870. In any suit or action arising thereunder, the burden of proof shall be on the employee claiming the benefits of its provisions.
> (Added by Stats. 1979, Ch. 1001.)
#### Delaware
<http://delcode.delaware.gov/title19/c008/index.shtml#805>
> § 805 Employee's right to certain inventions.
>
> Any provision in an employment agreement which provides that the employee shall assign or offer to assign any of the employee's rights in an invention to the employee's employer shall not apply to an invention that the employee developed entirely on the employee's own time without using the employer's equipment, supplies, facility or trade secret information, except for those inventions that:
>
> (1) Relate to the employer's business or actual or demonstrably anticipated research or development; or
> (2) Result from any work performed by the employee for the employer.
>
> To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.
>
> 64 Del. Laws, c. 257, § 1; 70 Del. Laws, c. 186, § 1.;
#### Illinois
<http://www.ilga.gov/legislation/ilcs/ilcs3.asp?ActID=2238>
> (765 ILCS 1060/1) (from Ch. 140, par. 301)
> Sec. 1. This Act shall be known and may be cited as the "Employee Patent Act".
> (Source: P.A. 83-493.)
>
> (765 ILCS 1060/2) (from Ch. 140, par. 302)
> Sec. 2. Employee rights to inventions - conditions). (1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this State and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.
> (2) An employer shall not require a provision made void and unenforceable by subsection (1) of this Section as a condition of employment or continuing employment. This Act shall not preempt existing common law applicable to any shop rights of employers with respect to employees who have not signed an employment agreement.
> (3) If an employment agreement entered into after January 1, 1984, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer.
> (Source: P.A. 83-493.)
>
> (765 ILCS 1060/3) (from Ch. 140, par. 303)
> Sec. 3. This Act takes effect upon becoming a law.
> (Source: P.A. 83-493.)
#### Kansas
<http://www.ksrevisor.org/statutes/chapters/ch44/044_001_0030.html>
> 44-130. Employment agreements assigning employee rights in inventions to employer; restrictions; certain provisions void; notice and disclosure. (a) Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which no equipment, supplies, facilities or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless:
> (1) The invention relates to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or
> (2) the invention results from any work performed by the employee for the employer.
> (b) Any provision in an employment agreement which purports to apply to an invention which it is prohibited from applying to under subsection (a), is to that extent against the public policy of this state and is to that extent void and unenforceable. No employer shall require a provision made void and unenforceable by this section as a condition of employment or continuing employment.
> (c) If an employment agreement contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer shall provide, at the time the agreement is made, a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless:
> (1) The invention relates directly to the business of the employer or to the employer's actual or demonstrably anticipated research or development; or
> (2) the invention results from any work performed by the employee for the employer.
> (d) Even though the employee meets the burden of proving the conditions specified in this section, the employee shall disclose, at the time of employment or thereafter, all inventions being developed by the employee, for the purpose of determining employer and employee rights in an invention.
> History: L. 1986, ch. 186, § 1; July 1.
#### Minnesota
<https://www.revisor.mn.gov/statutes?id=181.78>
> 181.78 AGREEMENTS; TERMS RELATING TO INVENTIONS.
> Subdivision 1. Inventions not related to employment. Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
> Subd. 2. Effect of subdivision 1. No employer shall require a provision made void and unenforceable by subdivision 1 as a condition of employment or continuing employment.
> Subd. 3. Notice to employee. If an employment agreement entered into after August 1, 1977 contains a provision requiring the employee to assign or offer to assign any of the employee's rights in any invention to an employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by the employee for the employer.
> History: 1977 c 47 s 1; 1986 c 444
#### Nevada
<https://www.leg.state.nv.us/nrs/NRS-600.html#NRS600Sec500>
> NRS 600.500  Employer is sole owner of patentable invention or trade secret developed by employee.  Except as otherwise provided by express written agreement, an employer is the sole owner of any patentable invention or trade secret developed by his or her employee during the course and scope of the employment that relates directly to work performed during the course and scope of the employment.
> (Added to NRS by 2001, 942; A 2003, 2832)
#### North Carolina
<http://www.ncleg.net/EnactedLegislation/Statutes/HTML/ByArticle/Chapter_66/Article_10A.html>
> Article 10A.
>
> Inventions Developed by Employee.
>
> § 66-57.1. Employee's right to certain inventions.
> Any provision in an employment agreement which provides that the employee shall assign or offer to assign any of his rights in an invention to his employer shall not apply to an invention that the employee developed entirely on his own time without using the employer's equipment, supplies, facility or trade secret information except for those inventions that (i) relate to the employer's business or actual or demonstrably anticipated research or development, or (ii) result from any work performed by the employee for the employer. To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this section. (1981, c. 488, s. 1.)
>
> § 66-57.2. Employer's rights.
> (a) An employer may not require a provision of an employment agreement made unenforceable under G.S. 66-57.1 as a condition of employment or continued employment. An employer, in an employment agreement, may require that the employee report all inventions developed by the employee, solely or jointly, during the term of his employment to the employer, including those asserted by the employee as nonassignable, for the purpose of determining employee or employer rights.
> (b) An employer's ownership of an employee's invention, discovery, or development that has or becomes vested in the employer by contract or by operation of law shall not be subject to revocation or rescission in the event of a dispute between the employer and employee concerning payment of compensation or benefits to the employee, subject to any contrary provision in the employee's written employment agreement. The foregoing provision shall not apply where the employee proves that the employer acquired ownership of the employee's invention, discovery, or development fraudulently.
> (c) If required by a contract between the employer and the United States or its agencies, the employer may require that full title to certain patents and inventions be in the United States. (1981, c. 488, s. 1; 2016-114, s. 4.)
#### Utah
<http://le.utah.gov/xcode/Title34/Chapter39/34-39.html>
> Chapter 39
> Employment Inventions Act
>
> 34-39-1 Citation of act.
> This act is known as the “Employment Inventions Act.”
>
>
> Enacted by Chapter 217, 1989 General Session
>
> 34-39-2 Definitions.
> As used in this chapter:
> (1) “Employment invention” means any invention or part thereof conceived, developed, reduced to practice, or created by an employee which is:
> (a) conceived, developed, reduced to practice, or created by the employee:
> (i) within the scope of his employment;
> (ii) on his employer’s time; or
> (iii) with the aid, assistance, or use of any of his employer’s property, equipment, facilities, supplies, resources, or intellectual property;
> (b) the result of any work, services, or duties performed by an employee for his employer;
> (c) related to the industry or trade of the employer; or
> (d) related to the current or demonstrably anticipated business, research, or development of the employer.
> (2) “Intellectual property” means any and all patents, trade secrets, know-how, technology, confidential information, ideas, copyrights, trademarks, and service marks and any and all rights, applications, and registrations relating to them.
>
> Enacted by Chapter 217, 1989 General Session
>
> 34-39-3 Scope of act -- When agreements between an employee and employer are enforceable or unenforceable with respect to employment inventions -- Exceptions.
> (1) An employment agreement between an employee and his employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is:
> (a) created by the employee entirely on his own time; and
> (b) not an employment invention.
> (2) An agreement between an employee and his employer may require the employee to assign or license, or to offer to assign or license, to his employer any or all of his rights and intellectual property in or to an employment invention.
> (3) Subsection (1) does not apply to:
> (a) any right, intellectual property or invention that is required by law or by contract between the employer and the United States government or a state or local government to be assigned or licensed to the United States; or
> (b) an agreement between an employee and his employer which is not an employment agreement.
> (4) Notwithstanding Subsection (1), an agreement is enforceable under Subsection (1) if the employee’s employment or continuation of employment is not conditioned on the employee’s acceptance of such agreement and the employee receives a consideration under such agreement which is not compensation for employment.
> (5) Employment of the employee or the continuation of his employment is sufficient consideration to support the enforceability of an agreement under Subsection (2) whether or not the agreement recites such consideration.
> (6) An employer may require his employees to agree to an agreement within the scope of Subsection (2) as a condition of employment or the continuation of employment.
> (7) An employer may not require his employees to agree to anything unenforceable under Subsection (1) as a condition of employment or the continuation of employment.
> (8) Nothing in this chapter invalidates or renders unenforceable any employment agreement or provisions of an employment agreement unrelated to employment inventions.
>
> Enacted by Chapter 217, 1989 General Session
#### Washington
<http://app.leg.wa.gov/RCW/default.aspx?cite=49.44.140>
> RCW 49.44.140
>
> Requiring assignment of employee's rights to inventions—Conditions.
> (1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
> (2) An employer shall not require a provision made void and unenforceable by subsection (1) of this section as a condition of employment or continuing employment.
> (3) If an employment agreement entered into after September 1, 1979, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work preformed [performed] by the employee for the employer.
>
> [ 1979 ex.s. c 177 § 2.]

15
README.md
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@ -24,15 +24,16 @@ BEIPA only claims _exclusive control_ of what the employee creates during the pe
Your best employees are creative all of the time. BEIPA is good for recruitment, retention, and motivation – just like other practices and policies that authentically promote work-life balance and autonomy:
* Employees who feel they need to look over their shoulder and hide personal projects unrelated to the business are demotivated and set up for conflict.
* You don't want to push out employees who feel they need to leave in order to work on a personal project unrelated to the business.
* You don't want to keep employees who are staying only because they're uncertain whether they have the rights to leave and work on a project unrelated to the business full time.
* Employees who feel they need to look over their shoulder and hide personal projects are demotivated and set up for conflict.
* You don't want to push out employees who feel they need to leave in order to work on a personal project.
* You don't want to keep employees who are staying only because they're uncertain whether they have the rights needed to leave and work on a side project full time.
* You want to encourage employee learning through creation and contributions to their communities (e.g., through open source), unhindered by need for employer permission.
* Controlling employee side projects unrelated to the business does not contribute to revenue or profit.
* Controlling employee side projects does not contribute to revenue or profit.
- Having a non-exlusive license to employee IP _related to the business_ maximizes benefit from employees' 24/7 creativity without the above downsides.
### Why would an employee want to use BEIPA?
You don't want to have to look over your shoulder or hide, feel forced into staying or leaving, or discouraged from learning and contributing with free time projects, because the employer may be claiming to own your creations unrelated to your employer's business. You can know that your employer has made an authentic commitment to (at least) one aspect of work-life balance.
You don't want to have to look over your shoulder or hide, feel forced into staying or leaving, or discouraged from learning and contributing with free time projects, because the employer may be claiming to own your creations. You can know that your employer has made an authentic commitment to (at least) one aspect of work-life balance.
### Why is BEIPA good for innovation? For society?
@ -50,7 +51,7 @@ A different employee IP agreement *could* stipulate that all IP created by the e
### What does BEIPA mean for patents?
BEIPA covers all forms of IP. A BEIPA covered employee can file a patent on a project unrelated to the employer's business, and the employee would own it.
BEIPA covers all forms of IP. A BEIPA covered employee can file a patent on work outside of the scope of their employment, and the employee would own it (if it is related to the employer's business, the employer automatically gets a non-exclusive license).
If employer and employee have particular patent objectives, they could be spelled out in a different or complementary IP agreement or other policy. One example of such an agreement is the [Innovator's Patent Agreement](https://github.com/twitter/innovators-patent-agreement) from Twitter, a commitment from a company to its employees that the company will not use patents in offensive litigation without the permission of the inventors. Other pertinent policy choices include participation in anti-troll and non-aggression networks such as [LOT](http://lotnet.com/) and [OIN](https://www.openinventionnetwork.com/), as well as contributing to open source projects.
@ -60,7 +61,7 @@ BEIPA was written for the United States. Feedback on making it more useful in an
Even within the United States, limits on employer ability to claim *all* employee-created IP vary. In [California](http://leginfo.legislature.ca.gov/faces/codes_displayText.xhtml?division=3.&chapter=2.&lawCode=LAB&article=3.5.) the main difference made by BEIPA is that IP developed with company equipment or relating to the company's business, but in an employee's free time and which the employee is not involved in as an employee, is not owned by the company (but the company does get a non-exclusive and unlimited license if the IP relates the the company's business). This recognizes that from the employee perspective, segregating one's life activities based on ownership of devices at hand or relatedness to an employer's potentially vast range of business that an individual employee is not involved with as an employee imposes significant cognitive overhead and often doesn't happen in practice, whatever agreements state. It also recognizes from the employer's perspective that the employer has a real interest in being able to use any IP created during an employee's term of employment that is related to their business (note this expands and makes explicit the traditional "shop right" to use in lieu of demanding exclusive control). In some states with less employee-friendly law, BEIPA makes a bigger difference relative to the maximum employer control allowable by law often baked into employee IP agreements.
See [Exhibit A: Laws Concerning Employment Agreements and Intellectual Property Assignment](Balanced_Employee_IP_Agreement.md#exhibit-a-laws-concerning-employment-agreements-and-intellectual-property-assignment) for a collection of some laws regulating employee IP agreements. Some of these may be helpful information for or even required notifications to covered employees. Currently only U.S. state laws are included. Contributions to coverage of other jurisdictions are welcome.
See [Laws Concerning Employment Agreements and Intellectual Property Assignment](Employee_IP_Laws.md) for a collection of some laws regulating employee IP agreements. Some of these may be helpful information for or even required notifications to covered employees. Currently only U.S. state laws are included. Contributions to coverage of other jurisdictions are welcome.
### Can I use BEIPA?