I am being offered a position with a leading Internet service company and within their employment agreement they have the following 'Pre-existing Materials' clause:
"For purposes of this Agreement, 'Pre-existing Materials' means any materials, code, methodology, process, technique, or Intellectual Property Rights developed, licensed or otherwise acquired by me,
solely or jointly with others, independent of the Agreement and Services to be rendered and which are not based upon and do not incorporate any [Company Name] Confidential Information or other Intellectual Property Rights of [Company Name]. I hereby grant to [Company Name] a perpetual,
irrevocable, fully paid-up, worldwide, non-exclusive, assignable, sublicensable license to use, reproduce, display, perform, distribute, and make derivative works of any Pre-existing Materials that are incorporated into the Work, in any medium hereby known or hereafter invented for any purpose."
I have a patent pending and have other material which I have not published that directly and indirectly relates to the company in general and my planned role in particular. Their general counsel seems unwilling to remove the clause, but said they could carve out items I wish to protect.
However, given some of my materials are not published (i.e., trade secrets) and I do not wish to share. Moreover, my patent attorney said that while I can disclose the pending patent as it's public, I risk any changes or additions to the filing could be deemed their property.
Is such a broad and overreaching clause legally enforceable in Virginia? If they are unwilling to remove this 'Pre-existing Materials' clause, what other options do I have besides turning down the opportunity? Are such clauses common?
"For purposes of this Agreement, 'Pre-existing Materials' means any materials, code, methodology, process, technique, or Intellectual Property Rights developed, licensed or otherwise acquired by me,
solely or jointly with others, independent of the Agreement and Services to be rendered and which are not based upon and do not incorporate any [Company Name] Confidential Information or other Intellectual Property Rights of [Company Name]. I hereby grant to [Company Name] a perpetual,
irrevocable, fully paid-up, worldwide, non-exclusive, assignable, sublicensable license to use, reproduce, display, perform, distribute, and make derivative works of any Pre-existing Materials that are incorporated into the Work, in any medium hereby known or hereafter invented for any purpose."
I have a patent pending and have other material which I have not published that directly and indirectly relates to the company in general and my planned role in particular. Their general counsel seems unwilling to remove the clause, but said they could carve out items I wish to protect.
However, given some of my materials are not published (i.e., trade secrets) and I do not wish to share. Moreover, my patent attorney said that while I can disclose the pending patent as it's public, I risk any changes or additions to the filing could be deemed their property.
Is such a broad and overreaching clause legally enforceable in Virginia? If they are unwilling to remove this 'Pre-existing Materials' clause, what other options do I have besides turning down the opportunity? Are such clauses common?