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base fork: twitter/innovators-patent-agreement
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Showing with 135 additions and 23 deletions.
  1. +91 −2 README.md
  2. +44 −21 innovators-patent-agreement.md
View
93 README.md
@@ -6,7 +6,92 @@ The company will not use the patents in offensive litigation without the permiss
This control flows with the patents, so if the company sells the patents to others,
the assignee can only use the patents as the inventor intended.
-## Issues and Contributing
+### Quick Start / Deployment
+
+<em>DISCLAIMER: The IPA and the supporting materials are available for informational purposes only and are NOT for the purpose of providing legal advice. You should contact a lawyer if you want to get advice with respect to any particular aspect of the IPA or if you want to implement it.</em>
+
+#### 1. Modify your employee agreements.
+
+You should have a standard employee agreement that deals with inventions and that includes a provision requiring that employees assign their inventions to the company. You can include the following sentence in your employee agreement dealing with invention assignments:
+
+> The Company and I agree, notwithstanding any other provision of this agreement, that any invention to be assigned by me to the Company under this agreement shall be assigned in accordance with the Innovator’s Patent Agreement (“IPA”) and, if a patent application is filed on any invention, that a copy of the executed IPA shall be recorded with the assignment branch of the patent office where the patent application is filed.
+
+#### 2. Use the IPA with any patents you file.
+
+Whenever you file a patent application, it is typical to have the inventor sign a patent assignment agreement which specifically assigns the patent application to the company. Instead of using whatever form your patent agent uses, use the IPA instead.
+
+The IPA should be signed by both the inventor and a corporate representative.
+
+After the IPA is signed, you should make sure that the document is recorded with the assignment branch of the Patent Office. This puts the whole world on notice that this patent application has been assigned in accordance with the provisions of the IPA.
+
+
+### FAQ
+#### For Companies | For Inventors/Engineers | For Investors
+
+#### For Companies:
+
+Q. <em>How does the IPA work?</em>
+
+A. The IPA includes a commitment from your company to your employees that their patents will be used for defensive purposes and will not be used in offensive litigation without their permission. What’s more, this control flows with the patents, so if the patents were sold to others, they could only use them as the inventor intended.
+
+
+Q: <em>What does “defensive purposes” mean?</em>
+
+A: Defensive purposes means that you can defend yourself should another party try to initiate patent litigation against you or your customers or users. Under the IPA, it also means that you can use these patents against anyone who has sued others offensively in the past (up to ten years).
+
+
+Q: <em>How is this actually in the company’s best interest, given how litigious the patent area is?</em>
+
+A: The IPA strikes a balance here. Your company keeps the capability to use patents defensively if someone sues you, or you have the option of pursuing legal action if you have the consent of the inventor. You do not keep the capability to seek patent licensing fees from others who have not used patents offensively. Nor can you sell your patents to someone who will seek patent licensing fees from them.
+
+
+Q: <em>So then why bother obtaining patents at all, if you’re going to let anyone use your technology? </em>
+
+A: Under the IPA, the principal value of patents is defensive. Patents are still important because you are reserving the ability to defend yourself with them while empowering your engineers by giving them a greater stake in the patent process.
+
+
+Q: <em>Doesn’t the IPA destroy corporate value?</em>
+
+A: We recommend that you discuss the IPA with your board of directors to understand the impact of adopting the IPA on corporate value. Whether the IPA may be right for your organization depends on a lot of factors, including whether your business model is based on generating revenue from patent licensing fees or whether it is based on competing by innovating and providing the best product or service.
+
+
+#### For Inventors/Engineers:
+
+Q: <em>What does this IPA mean for me, as an engineer/designer?</em>
+
+A: The IPA is a new way to do patent assignment that keeps some control in the hands of engineers and designers. When you assign a patent to an entity using the IPA, your patent can only be used for defensive purposes and will not be used in offensive litigation without your permission. With the IPA, you can be assured that your patents will be used only as a shield rather than as a weapon.
+
+
+Q: <em>What stops a company from simply going back on its promises to me under the IPA?</em>
+
+A: With the IPA, the inventors receive the ability to license anyone who has been improperly sued in violation of the IPA. So, even if the company changes its mind, you have the ability to hold them accountable under the IPA. Even if a patent monetizer purchases the patent and tries to argue that they are not bound by the restrictions of the IPA, you can protect anyone sued by the patent monetizers by licensing them in accordance with the IPA. We believe this license will survive any transfer of the patents.
+
+
+Q: <em>What if I work for a company that doesn’t use the IPA?</em>
+
+A: Is your company saying that it is filing the patent for defensive purposes? If it is, ask your company representative whether they are willing to put that in writing by using the IPA. If they are unwilling to do put their promise in writing, you may want to ask yourself why (and consider working someplace else [#jointheflock](http://twitter.com/jobs)).
+
+ Note that even if the company issues a pledge that the patent will not be asserted offensively, that pledge may not be enforceable if there is a change in management or if the company goes through bankruptcy. Even if you work at a company that promises you that they will not use patents offensively, this may not prevent the company from later being liquidated so that the patents end up in the hands of entities that seek to monetize them.
+
+ If your company is willing to use the IPA, even if only with you or only for specific inventions, please let us know at <IPA@twitter.com>.
+
+
+#### For Investors:
+
+Q: <em>Why should I encourage the startups that I invest in to use the IPA?</em>
+
+A: First, the IPA affords flexibility for a small startup. The IPA allows unrestricted use of the patents if the inventors consent. So, a small startup can still use its IPA patents offensively if the inventors (who are likely to be founders of the startup) agree that it is strategically necessary for the sake of the startup.
+
+ Second, the IPA limits the negative consequences if the startup fails. Without the IPA, when a startup fails, the patents survive to become fodder for patent monetizers. These patent monetizers never commercialize the inventions. Rather, they feed off of these patents and can create a patent thicket for future startups. The IPA restricts such patent monetizers. Patents under the IPA cannot be used offensively against future generations of startups.
+
+
+Q: <em>Doesn’t the IPA reduce the value of the startup?</em>
+
+A: We recommend that you discuss the IPA with your board of directors to understand the impact of adopting the IPA on your value. Whether the IPA may be right for your organization depends on a lot of factors, including whether your business model is based on generating revenue from patent licensing fees or whether it is based on competing by innovating and providing the best product or service. Depending on the nature of your business and your long term goals, the IPA can provide significant benefits for your company.
+
+
+
+### Issues and Contributing
Have a contribution idea or want to discuss something? Please create an issue here on GitHub.
@@ -14,6 +99,10 @@ https://github.com/twitter/innovators-patent-agreement/issues
Better yet, feel free to contribute a pull request if you have an improvement to the IPA.
-## License
+### License
This work is licensed under a [Creative Commons Attribution 3.0 Unported License](http://creativecommons.org/licenses/by/3.0/)
+
+For attribution requirements:
+
+"Innovators Patent Agreement" © 2012 Twitter, Inc, used under a Creative Commons Attribution Unported license: http://creativecommons.org/licenses/by/3.0/
View
65 innovators-patent-agreement.md
@@ -1,39 +1,62 @@
-## INNOVATOR’s PATENT AGREEMENT (IPA), Version 0.95
+### INNOVATOR’s PATENT AGREEMENT (IPA), Version 1.0
-WHEREAS the person(s) named below (collectively referred to as “Inventors”) have invented certain patentable subject matter which they desire to assign to the below-identified Company;
+This INNOVATOR’s PATENT AGREEMENT (“Agreement”) is made between the person(s) named below (collectively referred to as “Inventors”) and [COMPANY NAME], a [State of Incorporation] corporation, having a place of business at Company Address (“Company”).
-WHEREAS Company and the Inventors believe that software patents should only be used to make a positive impact in the world and, accordingly, should only be used for defensive purposes;
+WHEREAS the Inventors have invented certain patentable subject matter which they desire to assign to the Company;
NOW, THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged, the parties agree as follows:
-1. Inventors do hereby sell, assign, and transfer and have sold, assigned, and transferred to
+1. Subject to the terms and conditions herein, Inventors do hereby sell, assign, and transfer and have sold, assigned, and transferred to the Company, for itself and its successors, transferees, and assignees, the entire worldwide right, title, and interest in and to the following patent application(s):
+
+ <table>
+ <tr>
+ <td>Title</td>
+ <td>Application No.</td>
+ <td>Filed on</td>
+ </tr>
+ <tr>
+ <td></td>
+ <td></td>
+ <td></td>
+ </tr>
+ <tr>
+ <td></td>
+ <td></td>
+ <td></td>
+ </tr>
+ </table>
+
+ including (a) any and all inventions and improvements (“Subject Matter”) disclosed therein; (b) all right of priority in the above application(s) and in any underlying provisional or foreign application; (c) all provisional, utility, divisional, continuation, substitute, renewal, reissue, and other applications related thereto which have been or may be filed in the United States or elsewhere in the world; and (d) all patents (“Patents”), including reissues and reexaminations, which may be granted on any of the above applications, together with all rights to recover damages for infringement, including infringement of provisional rights.
+
+2. The Company, on behalf of itself and its successors, transferees, and assignees (collectively the “Assignee”), agrees not to assert any claims of any Patents which may be granted on any of the above applications unless asserted for a Defensive Purpose. An assertion of claims of the Patents shall be considered for a “Defensive Purpose” if the claims are asserted:
+
+ (a) against an Entity that has filed, maintained, threatened, or voluntarily participated in a patent infringement lawsuit against Assignee or any of Assignee’s users, affiliates, customers, suppliers, or distributors;
- [Company Name], a [State of Incorporation] corporation, having a place of business at \[Company Address] (“Company”), for itself and its successors, transferees, and assignees, the entire worldwide right, title, and interest in and to the following patent application(s):
+ (b) against an Entity that has filed, maintained, or voluntarily participated in a patent infringement lawsuit against another in the past ten years, so long as the Entity has not instituted the patent infringement lawsuit defensively in response to a patent litigation threat against the Entity; or
- Title:
+ (c) otherwise to deter a patent litigation threat against Assignee or Assignee’s users, affiliates, customers, suppliers, or distributors.
- Application No.:
+ If Assignee needs to assert any of the Patent claims against any Entity for other than a Defensive Purpose, Assignees must obtain prior written permission from all of the Inventors without additional consideration or threat.
- Filed on:
+ “Entity” means an individual, partnership, corporation, limited liability company, association, joint venture, trust, unincorporated organization or other entity. “Affiliate” means with respect to any Entity, any other Entity, whether or not existing on the date hereof, controlling controlled by or under common control with such first Entity. The term “control” (including with correlative meaning the terms “controlled by” and “under common control with”), as used with respect to any Entity, means the possession, directly or indirectly, of the power to direct or cause the direction or management and policies of such Entity, whether through the ownership of voting securities, by contract or otherwise.
- including (a) any and all inventions and improvements (“Subject Matter”) disclosed therein, (b) all right of priority in the above application(s) and in any underlying provisional or foreign application, (c) all provisional, utility, divisional, continuation, substitute, renewal, reissue, and other applications related thereto which have been or may be filed in the United States or elsewhere in the world, and (d) all patents (“Patents”), including reissues and reexaminations, which may be granted on any of the above applications, together with all rights to recover damages for infringement, including infringement of provisional rights.
+ Assignee acknowledges and agrees that the above promises are intended to run with the Patents and are binding on any future owner, assignee or exclusive licensee who has been given the right to enforce any claims of the Patents against third parties. Assignee covenants with Inventors that any assignment or transfer of its right, title, or interest herein will be conveyed with the promises herein as an encumbrance.
-2. Company, on behalf of itself and its successors, transferees, and assignees (collectively “Assignee”), agrees not to assert any claims of any Patents which may be granted on any of the above applications unless asserted for a Defensive Purpose. An assertion of claims of the Patents shall be considered for a “Defensive Purpose” if the claims are asserted:
+3. Inventors agree that Assignee may apply for and receive patents for Subject Matter in Assignee’s own name. Inventors agree, when requested, and without further consideration, to execute all papers necessary to fully secure to Assignee the rights, titles and interests herein conveyed. Inventors represent that Inventors have the rights, titles, and interests to convey as set forth herein; and Inventors covenant with Assignee that Inventors have not made and will not make any assignment, grant, mortgage, license, or other agreement affecting the rights, titles, and interests herein conveyed, except as explicitly set forth herein.
- (a) against an Entity that has filed, maintained, threatened, or voluntarily participated in an intellectual property lawsuit against Assignee or any of Assignee’s users, affiliates, customers, suppliers, or distributors;
+4. The Assignee hereby grants to the Inventors a perpetual, worldwide, non-exclusive, royalty-free, no-charge irrevocable license under the Patents, the license explicitly limited to those rights necessary to enforce the promises made by Assignee in section 2. Accordingly, if Assignee asserts any of the Patent claims against any entity in a manner that breaks the promises of section 2, the Inventors, individually or jointly, may grant written nonexclusive sublicenses, without the right to further sublicense, the scope of the sublicense being limited to those rights necessary to enforce the promises made by Assignee in section 2.
- (b) against an Entity that has filed, maintained, or voluntarily participated in a patent infringement lawsuit against another in the past ten years, so long as the Entity has not instituted the patent infringement lawsuit defensively in response to a patent litigation threat against the Entity; or
+ Any sublicense granted by the Inventors under this section must be without threat or additional consideration; otherwise, the sublicense will be considered void ab initio. This license to the Inventors is not assignable, although the license shall pass to the heirs of an inventor in the case that the inventor is deceased, and the inventors, individually or jointly, may appoint a representative who may act on their behalf in granting sublicenses under this section. Assignee acknowledges and agrees that the promises in section 2 and 4 are intended to benefit third parties, except in the case of an assertion of claims of the Patents authorized under section 2.
- (c) otherwise to deter a patent litigation threat against Assignee or Assignee’s users, affiliates, customers, suppliers, or distributors.
+AGREED TO AND ACCEPTED:
+
+
+
+_____________________________ Inventor
- If Assignee needs to assert any of the Patent claims against any entity for other than a Defensive Purpose, Assignees must obtain prior written permission from all of the Inventors without additional consideration or threat. An “Entity” includes any related entities, where the entities are related by either ownership, control, financial interest, or common purpose.
+[INVENTOR NAME]
- Assignee acknowledges and agrees that the above promises are intended to run with the Patents and are binding on any future owner, assignee or exclusive licensee who has been given the right to enforce any claims of the Patents against third parties. Assignee covenants with Inventors that any assignment or transfer of its right, title, and interest herein will be conveyed with the above promises as an encumbrance.
-3. Inventors agree that Assignee may apply for and receive patents for Subject Matter in Assignee’s own name. Inventors agree, when requested, and without further consideration, to execute all papers necessary to fully secure to Assignee the rights, titles and interests herein conveyed. Inventors represent that Inventors have the rights, titles, and interests to convey as set forth herein, and covenants with Assignee that Inventors have not made and will not make any assignment, grant, mortgage, license, or other agreement affecting the rights, titles, and interests herein conveyed.
+_____________________________ Company representative
-4. Company hereby grants a perpetual, worldwide, non-exclusive, royalty-free, no-charge, irrevocable license under the Patents to the Inventors, along with the right to sublicense as further described herein, solely so as to enforce the promises made by Assignee in paragraph 2. The Inventors’ right to sublicense is explicitly limited herein to those rights necessary to enforce the promises made by Assignee in paragraph 2. Accordingly, if Assignee asserts any of the Patent claims against any entity in a manner that breaks the promises of paragraph 2, the Inventors, individually or jointly, may grant a patent sublicense to the entity under the Patents, the scope of the sublicense being limited herein to those rights necessary to enforce the promises made in paragraph 2. Any sublicense granted by the Inventors under this paragraph must be without additional consideration or threat; otherwise, the sublicense will be considered void ab initio. This license to the Inventors is not assignable but may pass to the heirs of an inventor in the case that the inventor is deceased.
-
-
-
-_____________________________ Inventor
+[NAME]

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