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Schwegman Lundberg & Woessner

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Agreements with Third Parties

As a general recommendation, all employees should agree to and abide by confidentiality obligations as a term of their employment. Additionally, third parties should agree to uphold non-disclosure obligations before gaining access to company confidential information. Employees should work with the appropriate company personnel to obtain non-disclosure agreements approved by the company.

Contractor IP Agreements

Agreements with IP provisions can be used any time a contractor or outside party is engaged in a project where IP may be used or developed. An “IP Contractor”is any person or entity engaged by the company to assist in any way with the creation of IP. Such parties could include:

  • Software developers or software development companies
  • Technical personnel/engineers
  • Technical/engineering companies
  • Marketing or advertising personnel/companies
  • Any other independent contractors involved in IP Creation

The following IP terms can be considered for inclusion in contractor agreements:

  • Work Done by Personnel Under Contract. Warranty that all work done for the company will be done by personnel that have agreed in writing to abide by all the terms and conditions of the agreement.
  • No Violations of Third Party Agreements. Warranty that work for the company does not violate any non-compete or other contractual obligations to third parties including prior employers. This includes disclosure of any agreements restricting the work that a contractor can perform for the company.
  • Warranty of Originality. Warranty that the contractor will provide only original IP to the company.
  • Disclosure of Inventions. Agreement to disclose to the company inventions made or conceived while contracted to the Company.
  • Assignment of Inventions. Assignment of all rights for inventions made pursuant to or related to the engagement to the company.
  • Fully Paid Up License to any Third Party IP. In the event the contractor incorporates any non-original IP, the company should arrange to receive a fully paid up, world-wide license to the subject IP.
  • Works for Hire/Assignment of Copyrights. Assignment of all rights in copyrights to the company and an agreement that any qualifying copyright works are to be treated as works made for hire.
  • Execution of Documents. Agreement to execute documents in support of the assignment of rights or pursuit of IP rights.
  • Nondisclosure. Protection of confidential information of the companyand an agreement to not disclose such confidential information outside the of the company.
  • Non-compete. Non-compete provisions when possible. For example, a developer will not work on similar projects for competitors.
  • Economic Espionage Act. An incorporation by reference of the Economic Espionage Act.
  • No Solicitation. A covenant not to solicit other company employees.
  • Return of Property. A requirement to return all company property, including written or electronic information, upon separation.