Ownership of IP Rights in Work Product: Broad Transfer

(a) Reporting of Inventions. Provider shall promptly disclose to Customer all computer software programs, other works of authorship, formulas, processes, compositions of matter, databases, mask works, improvements, logos, symbols, designs, and inventions that Provider makes, conceives, reduces to practice, or creates, either alone or jointly with others, during the period of the Provider’s engagement with Customer (collectively, “Inventions”), whether or not in the course of such engagement and whether or not such Inventions are patentable, copyrightable, protectable as trade secrets, or otherwise subject to intellectual property protection.

(b) Customer Ownership. An Invention will be considered “Work Product” and will be Customer’s sole property if it fits any of the following three criteria: (1) it is developed using Customer’s equipment, supplies, facilities, or trade secrets; (2) it results from Provider’s work for Customer; or (3) it relates to Customer’s business or its current or anticipated research and development.

(i) Work-for-Hire. To the extent permissible under applicable law, Work Product will be considered work made for hire pursuant to the U.S. Copyright Act, 17 U.S.C. §§ 101 et seq. and any foreign equivalent thereof.

(ii) Assignment. To the extent, if any, that Customer does not own full right, title and interest in and to the Work Product pursuant to Subsection __(b)(i) above, Provider hereby assigns to Customer all of its ownership, right, title, and interest in and to all Work Product, including, without limitation: (A) all copyrights, patents, rights in mask works, trademarks, trade secrets, and other intellectual property rights and all other rights that may hereafter be vested relating to the Work Product, arising under U.S. or any other law, together with all national, foreign, state, provincial, and common law registrations, applications for registration, and renewals and extensions thereof; (B) all goodwill associated with Work Product; and (C) all benefits, privileges, causes of action, and remedies relating to any of the foregoing, whether before or hereafter accrued (including without limitation the exclusive rights to apply for such registrations, renewals, and extensions, to sue for all past infringements or violations of any of the rights listed above in this Section __, and to settle and retain proceeds from any such actions). 

(c) Backup License. To the extent, if any, that this Section __ does not provide Customer with full ownership, right, title, and interest in and to the Work Product, including without limitation to the extent that Work Product includes Prior Inventions (as defined below), Provider hereby grants Customer a perpetual, irrevocable, fully paid, royalty-free, worldwide license to reproduce, create derivative works from, distribute, publicly display, publicly perform, use, make, have made, offer for sale, sell or otherwise dispose of, and import the Work Product, with the right to sublicense each and every such right. Provider grants the license in Section __ under copyright, patent, and all other forms of intellectual property. Exercise of Customer’s rights pursuant to this Subsection __(c) does not excuse any breach of Provider’s obligations pursuant to Subsection __(b) above or its breach of the warranty in Section __ of this Agreement (Ownership/Infringement Warranty).

(d) Prior Inventions. Provider represents that Attachment __ (Prior Inventions) lists all Provider’s Inventions prior to the Effective Date which Provider has not separately assigned to Customer (collectively “Prior Inventions”), and that if Attachment __ is blank or not included, there are no Prior Inventions. Provider shall not incorporate any Prior Invention into the Work Product or otherwise use any Prior Invention in its work pursuant to this Agreement without Customer’s prior written consent.

(e) Moral Rights. In addition to the foregoing transfers and allocations of rights, Provider hereby irrevocably transfers and assigns to Customer any and all “moral rights” Provider may have in or with respect to the Work Product. Provider also hereby forever waives and agrees that it shall never, even after termination of its engagement with Customer, assert any moral right with respect to the Work Product. “Moral rights” include any rights to claim authorship of or credit on a work of authorship, to object to or prevent the modification or destruction of a work of authorship, or to withdraw from circulation or control the publication or distribution of a work of authorship, and any similar right, existing under judicial or statutory law of any country or subdivision of a country, or under any treaty, regardless of whether or not such right is described as a “moral right.”

(f) Further Assistance. Provider shall: (i) help Customer obtain and enforce patents, copyrights, rights in mask works, trade secret rights, and other legal protections for the Work Product in any and all jurisdictions throughout the world; and (ii) execute any documents Customer reasonably requests for use in obtaining or enforcing such rights and protections. Provider hereby appoints Customer or its designated representative as Provider’s attorney-in-fact to execute documents on Provider’s behalf for the purposes set forth above in this Subsection __(f). To the extent that the assistance required above in this Subsection __(f) occurs after Provider’s engagement with Customer, Customer shall reimburse Provider’s reasonable expenses incurred providing such assistance and compensate Provider at a reasonable rate for time spent at Customer’s request.

(g) Survival. The rights and obligations of this Section __ will survive any termination or expiration of this Agreement or of Provider’s engagement with Customer.