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The IP clause that could own your side project

An invention assignment clause can give your employer what you build outside working hours, if it relates to the business. This guide reads one from a real agreement filed with the SEC.

What it costs

For 12 months after you leave, related work is presumed to be the company’s.

Assumes the presumption in section 4(b) is not rebutted with evidence. The filing states no dollar figure.

The clause, from a real filing

4(a). Intellectual Property

Officer agrees that any and all Confidential Information, ideas, inventions, discoveries, patents, patent applications, technology, improvements, know-how … and the like (“Intellectual Property”), which are developed, conceived, created, discovered, learned, produced and/or otherwise generated by Officer, whether individually or otherwise, during the time that Officer is employed by Company, whether before or after execution of this Agreement, whether or not during working hours, that relate to: (a) current and anticipated businesses and/or activities of Company; (b) Company’s current and anticipated research or development; or (c) any work performed by Officer for Company are and shall be the sole and exclusive property of Company …
Officer Agreement, Exhibit 10.2, CIK 849869, Form 10-Q, filed with the SEC on May 6, 2026. Read the original on SEC.gov
  • High risk

    No carve-out for your own time

    It reaches work outside working hours, and nothing in the agreement sets aside your own time. Section 4(b) also presumes that related work finished in the year after you leave was made while you were employed, unless you present evidence the company accepts. The agreement lists no prior inventions.

The change to ask for

Before: whether or not during working hours, that relate to: (a) current and anticipated businesses and/or activities of Company; (b) Company’s current and anticipated research or development; or (c) any work performed by Officer for Company are and shall be the sole and exclusive property of Company …

After: whether or not during working hours, that relate to: (a) current and anticipated businesses and/or activities of Company; (b) Company’s current and anticipated research or development; or (c) any work performed by Officer for Company are and shall be the sole and exclusive property of Company, except anything Officer develops entirely on Officer’s own time, with Officer’s own equipment, and without Confidential Information, and except the project Officer names in Exhibit A …

Suggested language to discuss, not legal advice. Exhibit A is an example name for a list you write.

Before you sign: the invention clause

  1. Find the clause. It may sit under Intellectual Property, Inventions, or Proprietary Information.
  2. Check what counts as an invention: ideas and know-how, or only patentable work.
  3. Check how far it reaches: working hours only, or any hour, and whether it must relate to the business.
  4. Check whether your own time and your own equipment are left out.
  5. Check for a list of prior inventions, and consider listing projects you started before you joined.
  6. Check your state’s law. Some states limit what an employer can claim from your own time.
Open the one-page checklist to print
Transcript
  1. 0:00This clause can claim related work you build on your own time.
  2. 0:04It comes from an employment agreement filed with the SEC.
  3. 0:08It covers what you build while employed, even outside working hours, if related to the business.
  4. 0:14The clause gives the company that work, with no carve-out for your own time.
  5. 0:18For one year after you leave, related work is presumed to be the company’s.
  6. 0:23Check three things. What counts as an invention? Are your own time and equipment left out? Is there a list of prior work? Some states also limit these clauses.
  7. 0:32Ask to carve out your own time, your own equipment, and a named prior project.
  8. 0:38If you already have a project, you could name it in writing before you sign.
  9. 0:42A BeforeJD read marks a clause like this, explains it in plain English, and writes the change to ask for.
  10. 0:49It also drafts the email that asks for it.
  11. 0:52Check your contract for this clause.
  12. 0:55Your first read is free.

Keep reading

Check your contract for this clause.

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Your first read is free.

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BeforeJD is not a law firm. This is informational only, not legal advice.