Model Company Employee Agreement Creation and Ownership of Intellectual Property

[mlinksva]

https://docs.google.com/viewer?url=https://processmechanics.com/static/2015-07/ModelCo_IP_Policy.docx

Blog post about https://processmechanics.com/2015/07/23/a-model-ip-and-open-source-contribution-policy/

Based on policy used at Rackspace.

Just noticed, have only skimmed but maybe worth a mention in FAQ, maybe to learn from.

[mlinksva]

Quick read of MCEACOIP, notes relative to BEIPA. Most obvious differences: MCEACOIP is bigger, 5350 words vs 1130, and specifies process. I didn't notice (grain of salt) substantive differences on work for hire, confidentiality, conflicting IP agreements, or cooperation in securing and protecting IP.

MCEACOIP and BEIPA seem somewhat similar in spirit, but former includes several clauses that may not be necessary and would require more work to implement in another company, both customizing the agreement, and setting up and running a company IP committee.

MCEACOIP-only:

• Release of company IP: only company IP committee can do so (eg open source a project), write them; this is already company IP, so seems informational-only
• Compliance with state law: "Certain states, including California, have laws related to the assignment of inventions and require that employees be given notice of those laws. You acknowledge you have reviewed the list is attached as Exhibit A." [Which is 3 pages of such notice for 8 states.] Should probably add a similar collection of jurisdiction notices to the BEIPA repo for easy reference.
• Freedom of action, maintenance, at-will employment, trademarks: agreement expressly doesn't change anything; not clear why needed
• Disputed ownership: puts onus of proof on employee that discoveries for patent applications filed within 6 months of employment and related to work as an employee were made after employment
• Violations and disputes: may result in discipline, termination, settled per employee agreement or if not specified arbitration. Not clear why this is needed in IP agreement.
• Choice of law: Texas
• Survival: to end of employment, modified to limited extent necessary to be legal

Present in both:

• Contribution of company IP to other projects: manager approval (vs make sure legal knows, check with legal about CLAs)
• Pre-employment IP: also doesn't claim prior IP, but says "should" provide a list of prior IP to avoid confusion
• IP created using non-company resources: no subject matter conflict conceptually similar, but additionally requires notification and approval to/from company IP committee; this seems pretty heavyweight for all new IP created without company resources, considering the scope of copyright...it isn't clear that company claims ownership of unauthorized projects (which would not be enforceable in many states anyway), the projects just aren't authorized...if there are work consequences (see violations above) seems like bit of a reach into employee's private life, but maybe I'm misunderstanding
• IP created using company resources (which includes direction, in connection with, for use by, using equipment): broader, but with one key similarity - company laptop/phone aren't considered company resources when determining IP ownership
• Non-compete with respect to IP and only during term of employment: Not sure what this would cover beyond company owning IP related to company products and no conflicting IP agreements.
• Covenant not to sue company or customers for your IP: Might be very close in effect to BEIPA's contribution of your IP to company projects, but no suing customers for for your IP could be much broader.
• Shop rights: Again, might be very close in effect to BEIPA's contribution of your IP to company's projects
• Entire agreement: restrictive agreements to govern if they exist (vs entire and exclusive)