Assignment of Inventions to employer - exclusion of Inventions assigned or licensed to me?
<p>A NY law employment contract states in a section entitled <strong>All Inventions are Exclusively the Property of the Firm:</strong></p>

<blockquote>
  <p><em>Employee assigns to the Firm... without any additional consideration, all of Employee's right, title, and interest in any and all inventions that Employee invents, conceives of, creates, develops, or reduces to practice while employed by the Firm or for a period of one year...</em> </p>
</blockquote>

<p>Specifically, as pertains to Copyright:
I should have added this clause </p>

<blockquote>
  <p><em>Employee also agrees that...all inventions made by Employee (solely or jointly with others)...which are protectable by copyright are "works made for hire" as ... defined by US Copyright Act (17 USC Sec 101) and are deemed specifically ordered by the Firm under US Copyright Law. In the event  .. not to be a 'work made for hire', this Agreement shall operate as an irrevocable assignment ... of the copyright ... including all right, title and interest therein.</em></p>
</blockquote>

<p>At the same time, the contract states under <strong>Excluded Information:</strong></p>

<blockquote>
  <p><em>The restrictions contained in this Agreement shall not apply to any Prior Work....means discoveries, creations, developments, improvements, ..., ideas, reports and other creative work...Employee made or conceived such works prior to commencement of employment.... including but not limited to those described in Exhibit A</em></p>
</blockquote>

<p>Clearly, all copyrighted ideas / code done before employment are of course <em>Prior Work</em>. This is stronger if the copyright is put in Exhibit A, but can still be established even if the IP is not listed.  (e.g., timestamped code/papers in external repos, email trail, etc). </p>

<p>What if a Third Party licenses a copyright to the Employee or assigns a copyright to the Employee <em>subsequent</em> to his employment? Can the firm claim these licenses/copyrights as its own Property? </p>

<p>Is there any distinction between the two: licensing or assignment from the point of view of the Employee protecting his IP from the new firm? My (mostly ignorant) belief is that a license granted to the Employee, even if it is exclusive and perpetual <em>cannot</em> be claimed by the Firm, while an assignment is more questionable. Am I correct in saying that in neither case can the Firm established that the Employee invented these licensed/assigned inventions, since that claim can only be made by the (Third Party, original) copyright-holder.</p>

<blockquote>
  <p>all inventions <strong>that Employee</strong> invents, conceives of, creates, develops, or reduces to practice</p>
</blockquote>

<p>Things that the employee acquires but doesn’t create themselves are not covered.</p>

<p>Also, this clause appears to only apply to inventions, that is, things that are patentable. Other IP (e.g. copyright) is not captured.</p>

intellectual-property