Assigning Product Designs and Tooling to the Entity Not the Founder
Assigning CAD files and physical tooling directly to the corporate entity at legal incorporation eliminates co-founder title disputes and secures unencumbered assets.
Unassigned Prior Inventions Schedule
Meaning
Disclosure document attached to an employment agreement lists all intellectual property that an individual created before joining the company and which they intend to keep. This unassigned prior inventions schedule acts as a carve-out that prevents the employer from claiming ownership of these specific technologies or ideas. It provides a clear boundary between the past work of the employee and the new work they will perform during their tenure.
Conflict Prevention
Stating these exclusions at the start of the relationship avoids future arguments over whether a specific invention was developed on the company’s time. If an employee later uses a prior invention in a company product, the unassigned prior inventions schedule serves as evidence of their pre-existing rights. This document protects both the individual’s portfolio and the company’s legal standing by clarifying the scope of the assignment.
Licensing Clause
Agreements often state that if the employee incorporates a listed invention into a company project, the company automatically receives a non-exclusive license to use it. The unassigned prior inventions schedule ensures that the business can continue to operate even if it relies on a piece of technology owned by an employee. This compromise allows the firm to benefit from the expertise of the staff member without taking away their previous creations.
Portfolio Diligence
Investors review these schedules during an acquisition to identify any third-party rights that might affect the freedom of the company to operate. A blank unassigned prior inventions schedule suggests that the company owns everything produced by its staff, which simplifies the valuation process. This list is an essential part of the transparency needed for a clean and defensible intellectual property audit.