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Prior Inventions Employment Agreement Template for England and Wales

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Key Requirements PROMPT example:

Prior Inventions Employment Agreement

"I need a Prior Inventions Employment Agreement for a senior software engineer joining our AI startup who has several existing patents and pending applications that we need to clearly document before their start date of March 1, 2025."

Document background
The Prior Inventions Employment Agreement is essential when hiring employees who have created intellectual property before their employment begins. This agreement, governed by English and Welsh law, helps prevent future disputes by clearly documenting pre-existing inventions and establishing ownership rights. It typically includes detailed schedules of existing patents, pending applications, and technical documentation, while ensuring compliance with UK patent law and employment regulations. The agreement is particularly crucial for technology companies and research organizations where intellectual property is a significant concern.
Suggested Sections

1. Parties: Identifies the employer and employee

2. Background: Context of employment and purpose of agreement

3. Definitions: Key terms used throughout the agreement including Prior Inventions, Intellectual Property Rights, and Work Product

4. Disclosure of Prior Inventions: Employee's obligation to disclose existing inventions and confirmation of ownership

5. Ownership Rights: Clarification of ownership of prior inventions and assertion of employee's rights

6. Future Inventions: Treatment of inventions created during employment and assignment of rights

7. Confidentiality: Protection of confidential information relating to prior inventions

8. Governing Law: Specification of English and Welsh law as governing law and jurisdiction

Optional Sections

1. License Rights: Grants employer limited rights to use prior inventions where necessary for business operations

2. Third Party Rights: Addresses any third party interests or rights in prior inventions

3. Dispute Resolution: Alternative dispute resolution procedures and mechanisms

Suggested Schedules

1. Schedule 1 - Prior Inventions: Detailed list and description of employee's existing inventions

2. Schedule 2 - Patents: List of existing patents owned by employee

3. Schedule 3 - Pending Applications: List of patent applications in process

4. Schedule 4 - Technical Documentation: Supporting technical information and documentation for prior inventions

Authors

Alex Denne

Head of Growth (Open Source Law) @ ºÚÁÏÊÓÆµ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Relevant legal definitions

























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Industries

Patents Act 1977: Key legislation governing employee inventions (sections 39-43), establishing rights of employers and employees in relation to inventions, and provisions for compensation for certain inventions

Copyright, Designs and Patents Act 1988: Legislation determining ownership of works and designs created during employment, including intellectual property rights allocation between employer and employee

Employment Rights Act 1996: Foundational employment legislation covering general employment rights, obligations, contractual requirements, and standards for reasonable terms

Trade Secrets (Enforcement, etc.) Regulations 2018: Regulations implementing EU Trade Secrets Directive, governing protection of confidential information in employment context

Common Law Principles: Established legal principles covering duty of confidence, fiduciary duties, and reasonable restraint of trade

Data Protection Act 2018 and UK GDPR: Legislation governing the processing of personal data, including handling of employee data and invention records containing personal information

Equality Act 2010: Legislation ensuring terms of employment agreements are not discriminatory and comply with equality requirements

Contract Law principles: Fundamental legal principles governing contracts, including consideration, clarity of terms, and enforceability standards

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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