By Goolsby H.B. No. 22
76R115 KLA-D
A BILL TO BE ENTITLED
1-1 AN ACT
1-2 relating to assignment of an employee's rights in an invention.
1-3 BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
1-4 SECTION 1. Title 132, Revised Statutes, is amended by adding
1-5 Article 9021 to read as follows:
1-6 Art. 9021. ASSIGNMENT OF RIGHTS IN AN INVENTION
1-7 Sec. 1. DEFINITION. In this article, "invention" means a
1-8 discovery, process, machine, design, formulation, product, concept,
1-9 or idea, without regard to whether it is patentable.
1-10 Sec. 2. ENFORCEABILITY OF ASSIGNMENT OF RIGHTS:
1-11 REQUIREMENTS. Subject to Section 3 of this article, a provision in
1-12 an employment agreement that assigns to an employer any right of an
1-13 employee in an invention is void unless:
1-14 (1) consideration in addition to the employee's
1-15 employment compensation is given by the employer in exchange for
1-16 the assignment;
1-17 (2) the inclusion of the provision in the agreement is
1-18 not a condition of employment or continued employment; and
1-19 (3) the employer provides the employee with the
1-20 following notice printed in boldfaced type of not less than
1-21 10-point size:
1-22 THIS CONTRACT BETWEEN YOU AND (employer) IS
1-23 REGULATED BY THE STATE OF TEXAS' ASSIGNMENT OF RIGHTS
1-24 IN AN INVENTION ACT. EXCEPT AS PROVIDED BY THAT ACT,
2-1 YOU MAY NOT BE REQUIRED AS A CONDITION OF EMPLOYMENT OR
2-2 CONTINUED EMPLOYMENT TO MAKE AN ASSIGNMENT OF YOUR
2-3 RIGHTS IN AN INVENTION.
2-4 IF YOU ASSIGN EVEN A PARTIAL INTEREST IN AN
2-5 INVENTION TO YOUR EMPLOYER, YOUR EMPLOYER MAY HAVE THE
2-6 RIGHT TO SELL OR DISPOSE OF THE INVENTION WITHOUT YOUR
2-7 CONSENT AND MAY NOT HAVE TO SHARE THE PROFITS WITH YOU.
2-8 YOU ARE ENCOURAGED TO CONSULT WITH A QUALIFIED
2-9 ATTORNEY BEFORE SIGNING THIS CONTRACT. BY PROCEEDING
2-10 WITHOUT THE ADVICE OF A QUALIFIED ATTORNEY, YOU COULD
2-11 LOSE ANY RIGHTS YOU MIGHT HAVE IN YOUR INVENTION.
2-12 Sec. 3. EXCEPTION: CERTAIN AGREEMENTS VALID. A provision in
2-13 an employment agreement that assigns any right of an employee in an
2-14 invention is enforceable if the provision:
2-15 (1) applies only to an invention that:
2-16 (A) relates, at the time of conception or
2-17 reduction to practice, to:
2-18 (i) the employer's business; or
2-19 (ii) an actual or demonstrably anticipated
2-20 research or development project of the employer; or
2-21 (B) results from work performed by the employee
2-22 for the employer; and
2-23 (2) expressly states that the assignment of rights
2-24 applies only to rights in an invention described by Subdivision (1)
2-25 of this section.
2-26 Sec. 4. DISCLOSURE OF INVENTION. (a) An employer may
2-27 require in an employment agreement that the employee disclose in
3-1 confidence to the employer any invention that was developed or is
3-2 currently being developed by the employee.
3-3 (b) An employer may use information concerning an invention
3-4 disclosed under Subsection (a) of this section solely for the
3-5 purpose of determining the rights of the employer and the employee
3-6 in the invention.
3-7 (c) The employer shall maintain a record of a disclosed
3-8 invention until the fifth anniversary of the date of the
3-9 disclosure.
3-10 Sec. 5. ACTION FOR DAMAGES. (a) In this section, "economic
3-11 damages" and "exemplary damages" have the meanings assigned by
3-12 Section 41.001, Civil Practice and Remedies Code.
3-13 (b) An employee may bring an action against the employer for
3-14 the use of information concerning an invention disclosed under
3-15 Section 4(a) of this article other than the use authorized by
3-16 Section 4(b) of this article.
3-17 (c) In an action under this section, the employee may
3-18 recover:
3-19 (1) the greater of $1,000 or the employee's economic
3-20 damages;
3-21 (2) exemplary damages;
3-22 (3) court costs; and
3-23 (4) reasonable attorney's fees.
3-24 SECTION 2. The change in law made by this Act applies only
3-25 to an employment agreement that is entered into on or after the
3-26 effective date of this Act. An employment agreement entered into
3-27 before the effective date of this Act is covered by the law in
4-1 effect when it was entered into, and the former law is continued in
4-2 effect for that purpose.
4-3 SECTION 3. The importance of this legislation and the
4-4 crowded condition of the calendars in both houses create an
4-5 emergency and an imperative public necessity that the
4-6 constitutional rule requiring bills to be read on three several
4-7 days in each house be suspended, and this rule is hereby suspended,
4-8 and that this Act take effect and be in force from and after its
4-9 passage, and it is so enacted.