34-39-3 - Scope of act -- When agreements between an employee and employer are enforceable or unenforceable with respect to employment inventions -- Exceptions.
34-39-3. Scope of act -- When agreements between an employee and employer areenforceable or unenforceable with respect to employment inventions -- Exceptions.
(1) An employment agreement between an employee and his employer is not enforceableagainst the employee to the extent that the agreement requires the employee to assign or license,or to offer to assign or license, to the employer any right or intellectual property in or to aninvention that is:
(a) created by the employee entirely on his own time; and
(b) not an employment invention.
(2) An agreement between an employee and his employer may require the employee toassign or license, or to offer to assign or license, to his employer any or all of his rights andintellectual property in or to an employment invention.
(3) Subsection (1) does not apply to:
(a) any right, intellectual property or invention that is required by law or by contractbetween the employer and the United States government or a state or local government to beassigned or licensed to the United States; or
(b) an agreement between an employee and his employer which is not an employmentagreement.
(4) Notwithstanding Subsection (1), an agreement is enforceable under Subsection (1) ifthe employee's employment or continuation of employment is not conditioned on the employee'sacceptance of such agreement and the employee receives a consideration under such agreementwhich is not compensation for employment.
(5) Employment of the employee or the continuation of his employment is sufficientconsideration to support the enforceability of an agreement under Subsection (2) whether or notthe agreement recites such consideration.
(6) An employer may require his employees to agree to an agreement within the scope ofSubsection (2) as a condition of employment or the continuation of employment.
(7) An employer may not require his employees to agree to anything unenforceable underSubsection (1) as a condition of employment or the continuation of employment.
(8) Nothing in this chapter invalidates or renders unenforceable any employmentagreement or provisions of an employment agreement unrelated to employment inventions.
Enacted by Chapter 217, 1989 General Session