Are NDA 'Prior Inventions' Clauses Safe to Sign?

BenderMan asks: "I own a small consulting company. Today I was asked by yet another corporate customer to sign an NDA with the increasingly popular 'Prior Inventions' clause. The gist of it is they want you to provide a list of all your past and current inventions and/or ideas so they can define and protect the intellectual property that they have hired you to build. Like many of us that lay awake at night, whilst the hamster wheel spins new ideas, I've got a number of un-patented works in various stages of development. Given that mutual NDAs only provide one year of protection, I don't feel obligated, nor do I have sufficient time and energy, to fully and properly document my inventions for an NDA. While these clauses are written with good intentions, the reality is that these valuable ideas would be placed in the hands of people that could potentially profit with impunity (Have you priced patents lately?). Unfortunately many companies are not willing to strike this clause from their contracts. Does Slashdot agree that this is a concern, and how have you dealt with these situations?"

Comments

Can you post a sanitized version of the clause?

[petard]

It's tough to say without seeing the clause whether you really have the problem you imagine. And, ob. disclaimer, IANAL. TINLA.

I've solved this in the past by making sure that their ownership of my ideas is restricted to items produced in the course of (as opposed to during the term of) working for them. This gives them ownership of IP created as a result of executing their project and no more. In terms of the "Prior Inventions" clause, I'd attempt to rename it "Prior published inventions" and give them a good list if they won't strike it. If they really want a list of unpublished inventions as well, maybe you could extend the term of their NDA to something insane like 10 years?

If your ideas are valuable, they won't strike the prior inventions clause and won't amend it as I describe, and they won't restrict the IP transfer clause to items produced in the course of your contract, you may be dealing with a client that you should turn down. Those exist, and, though it's painful to turn away business, sometimes it's good sense to do so.

Re:Can you post a sanitized version of the clause?

[jours]

Here's a sample of a 'prior inventions' clause: http://www.rhs.com/web/blog/PowerOfTheSchwartz.nsf /d6plinks/RSCZ-6NY3U9

Like this guy says, I don't see how I could sign this, especially if I'm working with other customers at the time.

Just strike the clause

[patio11]

Odds are they are using boilerplate language and have even less desire to hear about your velcro detachable sideburns than you have to tell them. Just ask them if they're wedded to having that clause in the contract, and if not strike it. Alternately, specify that the clause only applies to a certain problem domain (e.g. "With respect to image processing, we warrant that the following is an exhaustive list of our IP: blah blah blah" and then your Sideburns 2.0 get to remain your own secret.)

IANAL, DTAYROS (don't trust anything you read on Slashdot).

Re:Prior Art

[Aneurysm9]

If my memory of Patent Practice and Procedures serves correct, only publicly disclosed inventions can be prior art. Inventions disclosed under an NDA would likely not be considered public and, thus, could not constitute prior art.

Re:I signed one

[hyfe]

I asked my would-be employer about it,

A contract holds you to what it says, not to what the other party think it says. Always.