Invention Assignment, Confidentiality and Non-Solicitation Agreement (Employee)

In consideration of my engagement or continued engagement as an independent consultant of Five Tier, Inc., a New York corporation (the “Company”), I hereby represent and agree as follows:

  1. I understand that during my engagement with the Company, I will have and had access to or acquire and acquired Confidential Information (as defined below), including, without limitation, software, intellectual property, processes and methods, development tools, scientific, technical and/or business innovations, and information regarding the Company’s customers, suppliers and business plans.  Notwithstanding anything herein to the contrary, I acknowledge and agree that my engagement constitutes a work-for-hire arrangement pursuant to which I am engaged to develop software, other intellectual property or other solutions for the Company which are owned by the Company and not by me.

  2. Assignment of Intellectual Property Rights.  In consideration of my engagement or continued engagement as an independent contractor, I agree to be bound by this Section 2.

    1. General.  I agree to assign, and hereby do assign, to the Company all of my rights in any Inventions (as hereinafter defined) (including all Intellectual Property Rights (as hereinafter defined) therein or related thereto) that were previously or are made, conceived or reduced to practice, in whole or in part and whether alone or with others, by me during my engagement with, or service with, the Company or any of its affiliates or which arise out of any activity conducted by, for or under the direction of the Company or any of its affiliates (whether or not conducted at the Company’s or its affiliates’ facilities, working hours or using any of the Company’s or its affiliates’ assets), or which are useful with, or relate directly or indirectly to, any Company Interest (as defined below).  I will promptly and fully disclose and provide all of the Inventions described above (the “Assigned Inventions”) to the Company.

    2. Assurances.  I hereby agree during the duration of my engagement with, or service with, the Company and thereafter to further assist the Company, at the Company’s expense, to evidence, record and perfect the Company’s rights in and ownership of the Assigned Inventions, to perfect, obtain, maintain, enforce and defend any rights specified to be so owned or assigned and to provide and execute all documentation necessary to effect the foregoing.  Should the Company be unable to secure my signature on any document necessary to apply for, prosecute, obtain, or enforce any patent, copyright, or other right or protection relating to any such Assigned Inventions, due to my incapacity or any other cause, I hereby irrevocably designate and appoint the Company and each of its duly authorized officers and agents as my agent and attorney-in-fact to do all lawfully permitted acts to further the prosecution, issuance, and enforcement of patents, copyrights, or other rights or protection with the same force and effect as if executed and delivered by me.

    3. Other Inventions.  I agree to not incorporate, or permit to be incorporated, any Invention conceived, created, developed or reduced to practice by me (alone or with others) prior to or independently of my engagement with, or service with, the Company or its affiliates (collectively, “Prior Inventions”) in any work I perform for the Company or its affiliates, without the Company’s prior written consent.  All Prior Inventions are listed herein:

       If (i) I use or disclose any Prior Inventions when acting within the scope of my engagement or service (or otherwise on behalf of the Company or its affiliates), or (ii) any Assigned Invention cannot be fully made, used, reproduced or otherwise exploited without using or violating any Prior Inventions, I hereby grant and agree to grant to the Company and all its affiliates a perpetual, irrevocable, worldwide, royalty-free, non-exclusive, sublicenseable right and license to reproduce, make derivative works of, distribute, publicly perform, publicly display, make, have made, use, sell, import, offer for sale, and otherwise exploit and exercise all such Prior Inventions and Intellectual Property Rights therein.

    4. Moral Rights.  To the extent allowed by applicable law, the terms of this Section 2 shall include all right of paternity, integrity, disclosure and withdrawal and any other rights that may be known as or referred to as moral right, artist’s rights, droit moral or the like (collectively, “Moral Rights”).  To the extent I retain any such Moral Rights under applicable law, I hereby ratify and consent to any action that may be taken with respect to such Moral Rights by, or authorized by, the Company and agree not to assert any Moral Rights with respect thereto.  I will confirm any such ratification, consent or agreement from time to time as requested by the Company.

    5. Definitions.  “Company Interest” means any business of the Company and its affiliates or any product, service, Invention or Intellectual Property Right that is used or under consideration or development by the Company or its affiliates.  “Intellectual Property Rights” means any and all intellectual property rights and other similar proprietary rights in any jurisdiction, whether registered or unregistered, and whether owned or held for use under license with any third party, including all rights and interests pertaining to or deriving from: (a) patents and patent applications, reexaminations, extensions and counterparts claiming property therefrom; inventions, invention disclosures, discoveries and improvements, whether or not patentable; (b) computer software and firmware, including data files, source code, object code and software-related specifications and documentation; (c) works of authorship, whether or not copyrightable; (d) trade secrets (including those trade secrets defined in the Uniform Trade Secrets Act and under corresponding statutory law and common law), business, technical and know-how information, non-public information, and confidential information and rights to limit the use of disclosure thereof by any person; (e) trademarks, trade names, service marks, certification marks, service names, brands, trade dress and logos and the goodwill associated therewith; (f) proprietary databases and data compilations and all documentation relating to the foregoing, including manuals, memoranda and record; (g) domain names; and (h) licenses of any of the foregoing; including in each case any registrations of, applications to register, and renewals and extensions of, any of the foregoing with or by any governmental authority in any jurisdiction.  “Invention” means any products, process, ideas, improvements, discoveries, inventions, designs, algorithms, financial models, writings, works of authorship, content, graphics, data, software, specifications, instructions, text, images, photographs, illustration, audio clips, trade secrets and other works, material and information, tangible or intangible, whether or not it may be patented, copyrighted or otherwise protected (including all versions, modifications, enhancements and derivative work thereof).

  3. Protection of Confidential Information of the Company.  I understand that my work as an independent consultant for the Company creates a relationship of trust and confidence between myself and the Company.  During and after the period of my engagement with the Company and its affiliates, I will not use or disclose or allow anyone else to use or disclose any Confidential Information except as may be necessary in the performance of services for the Company and its affiliates or as may be authorized in advance by appropriate officers of the Company.  “Confidential Information” means confidential, secret or other non-public or proprietary information of or about the Company and its affiliates, their respective products, licensors, suppliers or customers and shall include, without limitation, information regarding: Inventions, methodologies, processes, tools, computer programs and documentation, manufacturing and application information, business strategies, financial information, forecasts, personnel information, customer lists or other customer information, trade secrets, new product developments, market information and advertising and business and marketing plans relating to the Company and its affiliates and any other non-public information, whether in writing or given to me orally, which I know or have reason to know the Company would like to treat as confidential for any purpose, such as maintaining a competitive advantage or avoiding undesirable publicity.  Except as set forth herein, I will keep all Confidential Information secret and will not allow any unauthorized use of the same, whether or not any document containing it is marked as confidential.  In addition, if I am requested or required (by oral questions, interrogatories, requests for information, subpoena, civil investigative demand, or similar process) to disclose any Confidential Information, it is agreed that I will provide the Company with prompt written notice of such request(s) so that the Company may seek an appropriate protective order.  If, failing the entry of a protective order, I am, in the opinion of my counsel compelled to disclose any Confidential Information under pain of liability for contempt or other censure or penalty, I may disclose only that portion of such Confidential Information as is legally required without liability hereunder; provided, that I agree to exercise my reasonable efforts to obtain assurance that confidential treatment will be accorded such Confidential Information.  Upon termination of my engagement with the Company and its affiliates, I will promptly deliver to the Company all documents and materials of any nature pertaining to my engagement with the Company and I will not take with me any documents or materials or copies thereof containing any Confidential Information.

  4. Non-Solicitation.  I understand that my work as an independent consultant for the Company creates a relationship of trust and confidence between myself and the Company.  During my engagement with the Company and its affiliates and for a period of [two (2) years] thereafter, I will not request or otherwise attempt to induce or influence, directly or indirectly, any present customer, licensor or supplier, or prospective customer, licensor or supplier, of the Company or other persons sharing a business relationship with the Company to cancel, to limit, divert, reduce or postpone their business with the Company, or otherwise take any action which might be to the disadvantage of the Company.  During my engagement with the Company and for a period of [two (2) years] thereafter, I will not hire or solicit for employment, directly or indirectly, or induce or actively attempt to influence, any agent, consultant or Employee of the Company or any Affiliate of the Company, as such capitalized terms are defined in the Securities Act of 1933, as amended, to terminate his or her employment or discontinue such person’s consultant, contractor or other business association with the Company.

  5. Other Agreements.  I represent that my performance of all the terms of this Agreement and my duties as an independent consultant for the Company will not breach any invention assignment agreement, confidential information agreement, non-competition agreement or other agreement with any former employer or any other party.  I represent that I have not and will not bring with me to the Company or use in the performance of services for the Company or its affiliates any documents or materials of a former employer that are not generally available to the public.

  6. Defend Trade Secrets Act. Pursuant to the Defend Trade Secrets Act of 2016, an individual may not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that (A) is made (i) in confidence to a federal, state, or local government official, either directly or indirectly, or to an attorney, and (ii) solely for the purpose of reporting or investigating a suspected violation of law, or (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.  Nothing in this Agreement prohibits a disclosure of trade secret information as provided in the preceding sentence.  The Company encourages all independent consultants to report a suspected violation of law, including a suspected violation of law involving trade secrets, pursuant to the Company’s whistleblower policy to the Company’s chief executive officer or any other person identified in such policy.  A copy of the policy is available at the Company’s principal place of business.  In addition, an individual who files a lawsuit for retaliation by the Company for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding, if the individual files any document containing the trade secret under seal and does not disclose the trade secret, except pursuant to court order.

  7. Injunctive Relief.  I understand that in the event of a breach or threatened breach of this Agreement by me the Company may suffer irreparable harm and monetary damages alone would not adequately compensate the Company.  The Company will therefore be entitled to injunctive relief to enforce this Agreement in addition to any other remedies which the Company may be entitled to at law or hereunder.

  8. Enforcement and Severability.  I acknowledge that each of the provisions in this Agreement are separate and independent covenants.  I agree that if any court shall determine that any provision of this Agreement is unenforceable with respect to its term or scope such provision shall nonetheless be enforceable by any such court upon such modified term or scope as may be determined by such court to be reasonable and enforceable.  The remainder of this Agreement shall not be affected by the unenforceability or court ordered modification of a specific provision.

  9. Governing Law.  The laws of the State of New York shall govern the interpretation, validity and performance of the terms of this Agreement, regardless of the law that might be applied under principles of conflicts of law.

  10. Superseding Agreement.  I understand and agree that this Agreement contains the entire agreement of the parties with respect to subject matter hereof and supersedes all previous agreements and understandings between the parties with respect to its subject matter.


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Signed by Frank O'Brien
Signed On: September 18, 2017

Five Tier, Inc.
Signature Certificate
Document name: Invention Assignment, Confidentiality and Non-Solicitation Agreement (Employee)
Unique Document ID: 716b733d56340f57929ba10c85f8185d727b15b4
Timestamp Audit
September 18, 2017 6:47 pm ESTInvention Assignment, Confidentiality and Non-Solicitation Agreement (Employee) Uploaded by Frank O'Brien - IP