Can I restrict a contractor from disclosing to others information that is not patentable? Suppose I am contracting out some research / experiments to improve upon a process my company already practices. Obviously I need to first tell him what we practice under status quo. Now I want to restrict the contractor from disclosing any of this to third parties. On the other hand, a lot of stuff we practice is not exactly patentable since there are old papers and expired patents out there describing some of these steps and innovations. i.e. If some third party did indeed independently come up with the same combination of process steps there's not much we could do about it. But then again there's a ton of patents and articles and the value lies in knowing which ones to combine to produce a commercially viable product. Can I still structure the agreement such that I prohibit the contractor from disclosing what we practice? Although he could argue that all of it is described somewhere in the open literature? As an extension, if a third party hypothetically started practicing what we do on the basis of stuff disclosed by the contractor, we'd have no patent to sue them for. But could we still do anything about it? Just want to get opinions on what the body of law is (or precedents) that I ought to be reading to understand such situations.
Anything that helps you with your business and that you keep secret is a trade secret. The "keeping it secret" is an important part. Competitors are free to discover the same information themselves and use it, but stealing it from you is illegal. If a contractor needs to learn this information to do their job, you make them sign a non-disclosure agreement or confidentiality agreement which forbids them to pass that information on. That way, it remains a trade secret. If the contractor gives your trade secrets away, that is breach of contract and you can sue for damages. If a competitor pays your contractor to give them your trade secrets, that's not just illegal, it's criminal. On the other hand, if the contractor puts the information on his blog for example where everyone can read it, without having been enticed by someone to do this, then I believe your trade secret is gone and competitors can use it. Same as if you left documents on a park bench and your competitor finds them and reads them. You have to keep a trade secret a secret; if you fail to do so you lose. Asked about patents: If there is a non-disclosure or confidentiality agreement in place, then nobody can apply for a patent. The whole idea of a patent is that you get legal protection in exchange for disclosing your invention. Applying for a patent would mean violation of the non-disclosure agreement.
Notwithstanding in this case takes its ordinary meaning - "despite": Despite anything to the contrary contained in this Agreement, any provision of this Agreement which provides for me to assign any of my rights to a Work shall not apply to any invention developed on my own time without using equipment, supplies, facilities or trade secrets… Without having the text of the rest of the relevant parts of the contract, my initial interpretation is that the effect of this, is that you would not need to assign your rights to Works produced in your own time without connection to your paid employment. Also, if this was subordinate to the other clauses you mentioned, then it would have little or no effect. Finally, the general legal principle is that works produced in your own time with no connection to your employment (resources, knowledge or otherwise) are not assigned, unless specifically stated. That is, the contract would generally explicitly state that works produced in your own time with no reliance on your employment are assigned to the Employer. However, such a term is almost certainly unreasonable and could be challenged in court if the employer ever attempted to enforce it.
This depends on the representations that were made at the time of forming the contract, the prior knowledge of possible interference, and the nature of the interference by the third party. If the interference, or likely interference was known: To you, the vendor, and you made representations that your service would work despite this, or you did not disclose this, then you may have sold a product that was not fit for purpose and the client may be entitled to statutory relief, or may not be required to fulfil their contractual obligations To you and the client, and you notified them that this may prevent use of your service, and despite your advice they decided to enter into the contract, then the client is unlikely to be entitled to relief and must fulfil their contractual obligations To only the client, then they are unlikely to be entitled to relief and must fulfil their contractual obligations If the interference is of a nature such that the third party was aware of your contractual relationship, caused such an interference resulting in a breach of contract, and was not entitled to create such a breach, then the third party may have committed the tort of economic interference (generally known as tortious interference) and either you or your client may be entitled to seek damages, if any.
You need a lawyer There is no magic phrase to do what you want. The company will care about defending their assets, while you will want to defend yours. Only a lawyer will be able to tailor the condition that makes sense based on what your job's domain covers and your side projects. It is entirely possible that your personal projects conflict with your employer's, and you must then put your personal projects on hold or risk getting sued. e.g.) developing two pieces of software that does the same thing. Your lawyer will be able to advise on how that looks and what to do. No random strangers on the internet can give you accurate advice.
Law (regardless of its type) supersedes contract, provided it has jurisdiction over the persons bound by that contract. Contract provisions that are counter to law are generally held to be void. State law has authority over an employer's policies or hand book. However, there may be exceptions in state law (so I would double check). A frequent exception (at least in California law, which I am most familiar with) is for very small businesses. Another exception, from C.R.S. § 8-4-101(5), is if you are considered a "contractor" rather than an employee, per the government's determination. It is possibly worth your time to let you employer know of this conflict before termination if possible, so that they can adjust their policies, rather than in an adversarial position after termination, if only to avoid the headache.
Until and unless a patent is issued, the inventor has no exclusive rights. Assuming a patent is granted, the issued claims will be what defines infringement. What you do before the patent is issued is not infringement since there is nothing to infringe. However, if there is a finding of infringement in the U.S. for activity after a patent is issued, the patent owner can possibly also get royalties for activities you engaged in (in the U.S.) before the patent was issued under 35 U.S.C. § 154(d). This ABA article explains its effect in practice. The rights the patentee has in this regard are called &quot;provisional rights&quot;. Nothing at all to do with provisional applications. In the U.S., once a patent application is published, someone who does something that would infringe a hypothetical future patent with claims very similar to the published claims and who is on notice of the publication, can be subject to future royalties. If the issued claims are quite different from the published claims, this law does not apply. As mentioned in the ABA article this was put in place by Congress when the 18 month publication requirement went in. That was part of an international treaty that has the U.S. conform to the publication regimen the rest of the world had been doing. Prior to that treaty U.S. patent applications were confidential up to the day of grant. If an applicant decided the allowed claims were not worth the disclosure, they could abandon the patent application and opt to keep it a trade secret instead. This is still possible by asserting, in a non-publication request, to the USPTO that no filing outside the U.S. will be made.
Is that legal given that the original deal was as a contract-to-hire basis? No, unless the contractor agrees to an amendment/contract that incorporates a non-compete clause. A party is not allowed to unilaterally modify against a counterparty's will an existing, binding contract. What you describe seemingly falls short of being a cognizable amendment to the contract. What would someone do if they were offered employment and then the contracting agency threatened to sue the person? The person might want to educate the intermediary/agency about the invalidity of unilateral amendments that are not agreed upon. The intermediary's awareness of this tenet of contract law --or its awareness that the threatened person is knowledgeable of that principle-- might dissuade the intermediary from litigating its unviable claim. Regardless, given the prospect of litigation, the person needs to make sure that henceforth all his communications with the intermediary are in writing. The person might also want to inquire of the employer whether its contract with the intermediary contains a clause entitling the employer to hire the intermediary's contractors. If it does, the intermediary's threats to the person sound in intermediary's breach of that contract. A claim of tortious interference with relation is unavailable unless the intermediary's misconduct actually disrupts the relation or prospect between the employer and the person, but it is clear that the intermediary's acts are in the direction of frustrating that relation. Even if there is no such clause between the employer and the intermediary, the person might want to update the employer on how the intermediary is trying to disrupt their tacitly agreed contract-to-hire basis.
I don’t understand why you think this is a “3rd party communication” - as I read it it says it’s an email from you. You are most definitely not a third party. Notwithstanding, communication between 3rd parties is not prima facie excluded. For example, correspondence between your company and your accountant (who are both third parties) is likely to be extremely relevant to a family law case. Assuming that it is relevant (which is hard to say without context) and that it doesn’t fall foul of one of the evidentiary rules (hearsay, opinion, privilege etc.) there is no reason why it wouldn’t be admissible.