LLC CIIAA For Garett Johnson
LLC CIIAA For Garett Johnson
As a condition of becoming a member of CHAINSTACK, LLC, a Delaware limited liability company, or any of
its current or future subsidiaries, affiliates, successors or assigns (collectively, the “Company” ), and in consideration
of Service Provider’s relationship with the Company and receipt of any distributions or compensation now and
hereafter paid by the Company, the receipt of Confidential Information (as defined below) while associated with the
Company, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged,
Service Provider hereby agrees to the following:
1. Relationship . This Confidential Information and Invention Assignment Agreement (this “Agreement”)
will apply to Service Provider’s relationship with the Company as a service provider and/or member. If that
relationship ends and the Company, within one (1) year thereafter, either employs Service Provider or re-
engages Service Provider as a service provider, this Agreement will also apply to such later service
relationship, unless the parties hereto otherwise agree in writing. Any service provider relationship between the
parties hereto, whether commenced prior to, upon or after the date of this Agreement, is referred to herein as
the “Relationship.”
2. Applicability to Past Activities. The Company and Service Provider acknowledge that Service
Provider may have performed work, activities, services or made efforts on behalf of or for the benefit of the
Company, or related to the current or prospective business of the Company in anticipation of Service Provider’s
involvement with the Company, that would have been “Services” if performed during the term of this
Agreement, for a period of time prior to the Effective Date of this Agreement (the “Prior Service Period”).
Accordingly, if and to the extent that, during the Prior Service Period: (i) Service Provider received access to
any information from or on behalf of the Company that would have been Confidential Information (as defined
below) if Service Provider received access to such information during the term of this Agreement; or (ii)
Service Provider (a) conceived, created, authored, invented, developed or reduced to practice any item
(including any intellectual property rights with respect thereto) on behalf of or for the benefit of the Company,
or related to the current or prospective business of the Company in anticipation of Service Provider’s
involvement with the Company, that would have been an Invention (as defined below) if conceived, created,
authored, invented, developed or reduced to practice during the term of this Agreement; or (b) incorporated into
any such item any pre-existing invention, improvement, development, concept, discovery or other proprietary
information that would have been a Prior Invention (as defined below) if incorporated into such item during the
term of this Agreement; then any such information shall be deemed “Confidential Information” hereunder and
any such item shall be deemed an “Invention” or “Prior Invention” hereunder, and this Agreement shall apply
to such activities, information or item as if disclosed, conceived, created, authored, invented, developed or
reduced to practice during the term of this Agreement.
3. Service Agreement . Service Provider has entered into an operating agreement and/or service
agreement with the Company on or about the date hereof regarding Service Provider’s membership in and/or
services to the Company (the “Member Agreement”). The services rendered by Service Provider as a member
pursuant to the Member Agreement are referred to herein as the “Services” and this Agreement is intended to
supplement and form an integral part of any such Member Agreement(s).
4. Confidential Information .
(a) Protection of Information. Service Provider understands that during the Relationship, the
Company intends to provide Service Provider with certain information, including Confidential
Information (as defined below), without which Service Provider would not be able to perform Service
Provider’s duties to the Company. At all times during the term of the Relationship and thereafter, Service
Provider shall hold in strictest confidence, and not use, except for the benefit of the Company to the
extent necessary to perform the Services, and not disclose to any person, firm, corporation or other entity,
without written authorization from the Company in each instance, any Confidential Information that
Service Provider obtains from the Company or otherwise obtains, accesses or creates in connection with,
or as a result of, the Services during the term of the Relationship, whether or not during working hours,
until such Confidential Information becomes publicly and widely known and made generally available
through no wrongful act of Service Provider or of others who were under confidentiality obligations as to
the item or items involved. Service Provider shall not make copies of such Confidential Information
except as authorized by the Company or in the ordinary course of the provision of Services.
(c) Third Party Information . Service Provider’s agreements in this Section 4 are intended to be
for the benefit of the Company and any third party that has entrusted information or physical material to
the Company in confidence. During the term of the Relationship and thereafter, Service Provider will not
improperly use or disclose to the Company any confidential, proprietary or secret information of Service
Provider’s former clients or any other person, and Service Provider will not bring any such information
onto the Company’s property or place of business.
(d) Other Rights. This Agreement is intended to supplement, and not to supersede, any rights the
Company may have in law or equity with respect to the protection of trade secrets or confidential or
proprietary information.
(e) U.S. Defend Trade Secrets Act. Notwithstanding the foregoing, the U.S. Defend Trade
Secrets Act of 2016 (“DTSA”) provides that an individual shall not be held criminally or civilly liable
under any federal or state trade secret law for the disclosure of a trade secret that 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 (iii) in a complaint or
other document filed in a lawsuit or other proceeding, if such filing is made under seal. In addition,
DTSA provides that an individual who files a lawsuit for retaliation by an employer 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 (A) files any document containing the trade
secret under seal; and (B) does not disclose the trade secret, except pursuant to court order.
5. Ownership of Inventions.
(a) Inventions Retained and Licensed. Service Provider has attached hereto, as Exhibit A, a
complete list describing with particularity all Inventions (as defined below) that, as of the Effective Date:
(i) have been created by or on behalf of Service Provider, and/or (ii) are owned exclusively by Service
Provider or jointly by Service Provider with others or in which Service Provider has an interest, and that
relate in any way to any of the Company’s actual or proposed businesses, products, services, or research
and development, and which are not assigned to the Company hereunder (collectively “Prior
Inventions”); or, if no such list is attached, Service Provider represents and warrants that there are no
such Inventions at the time of signing this Agreement, and to the extent such Inventions do exist and are
not listed on Exhibit A, Service Provider hereby forever waives any and all rights or claims of ownership
to such Inventions. Service Provider understands that Service Provider’s listing of any Inventions on
Exhibit A does not constitute an acknowledgement by the Company of the existence or extent of such
Inventions, nor of Service Provider’s ownership of such Inventions. Service Provider further understands
that Service Provider must receive the formal approval of the Company before commencing Service
Provider’s Relationship with the Company.
(b) Use or Incorporation of Inventions. If in the course of the Relationship, Service Provider
uses or incorporates into any of the Company’s products, services, processes or machines any Invention
not assigned to the Company pursuant to Section 5(d) of this Agreement in which Service Provider has an
interest, Service Provider will promptly so inform the Company in writing. Whether or not Service
Provider gives such notice, Service Provider hereby irrevocably grants to the Company a nonexclusive,
fully paid-up, royalty-free, assumable, perpetual, worldwide license, with right to transfer and to
sublicense, to practice and exploit such Invention and to make, have made, copy, modify, make derivative
works of, use, sell, import, and otherwise distribute such Invention under all applicable intellectual
property laws without restriction of any kind.
(c) Inventions . Service Provider understands that “Inventions” means discoveries, developments,
concepts, designs, ideas, know how, modifications, improvements, derivative works, inventions, trade
secrets and/or original works of authorship, whether or not patentable, copyrightable or otherwise legally
protectable. Service Provider understands this includes, but is not limited to, any new product, machine,
article of manufacture, biological material, method, procedure, process, technique, use, equipment,
device, apparatus, system, compound, formulation, composition of matter, design or configuration of any
kind, or any improvement thereon. Service Provider understands that “Company Inventions” means any
and all Inventions that Service Provider or Service Provider’s personnel may solely or jointly author,
discover, develop, conceive, or reduce to practice in connection with, or as a result of, the Services
performed for the Company or otherwise in connection with the Relationship, except as otherwise
provided in Section 5(g) below.
(d) Assignment of Company Inventions. Service Provider will promptly make full written
disclosure to the Company, will hold in trust for the sole right and benefit of the Company, and hereby
assigns to the Company, or its designee, all of Service Provider’s right, title and interest throughout the
world in and to any and all Company Inventions and all patent, copyright, trademark, trade secret and
other intellectual property rights and other proprietary rights therein. Service Provider hereby waives and
irrevocably quitclaims to the Company or its designee any and all claims, of any nature whatsoever, that
Service Provider now has or may hereafter have for infringement of any and all Company Inventions.
Any assignment of Company Inventions includes all rights of attribution, paternity, integrity,
modification, disclosure and withdrawal, and any other rights throughout the world that may be known as
or referred to as “moral rights,” “artist’s rights,” “droit moral,” or the like (collectively, “Moral Rights”).
To the extent that Moral Rights cannot be assigned under applicable law, Service Provider hereby waives
and agrees not to enforce any and all Moral Rights, including, without limitation, any limitation on
subsequent modification, to the extent permitted under applicable law. If Service Provider has any rights
to the Company Inventions, other than Moral Rights, that cannot be assigned to the Company, Service
Provider hereby unconditionally and irrevocably grants to the Company during the term of such rights, an
exclusive, irrevocable, perpetual, worldwide, fully paid and royalty-free license, with rights to sublicense
through multiple levels of sublicensees, to reproduce, distribute, display, perform, prepare derivative
works of and otherwise modify, make, have made, sell, offer to sell, import, practice methods, processes
and procedures and otherwise use and exploit, such Company Inventions.
(e) Maintenance of Records. Service Provider shall keep and maintain adequate and current
written records of all Company Inventions made or conceived by Service Provider or Service Provider’s
personnel (solely or jointly with others) during the term of the Relationship. The records may be in the
form of notes, sketches, drawings, flow charts, electronic data or recordings, laboratory notebooks, or any
other format. The records will be available to and remain the sole property of the Company at all times.
Service Provider shall not remove such records from the Company’s place of business or systems except
as expressly permitted by Company policy which may, from time to time, be revised at the sole election
of the Company for the purpose of furthering the Company’s business. Service Provider shall deliver all
such records (including any copies thereof) to the Company at the time of termination of the Relationship
as provided for in Section 6 and Section 7.
(f) Intellectual Property Rights. Service Provider shall assist the Company, or its designee, at its
expense, in every proper way in securing the Company’s, or its designee’s, rights in the Company
Inventions and any copyrights, patents, trademarks, mask work rights, Moral Rights, or other intellectual
property rights relating thereto in any and all countries, including the disclosure to the Company or its
designee of all pertinent information and data with respect thereto, the execution of all applications,
specifications, oaths, assignments, recordations, and all other instruments which the Company or its
designee shall deem necessary in order to apply for, obtain, maintain and transfer such rights, or if not
transferable, waive and shall never assert such rights, and in order to assign and convey to the Company
or its designee, and any successors, assigns and nominees the sole and exclusive right, title and interest in
and to such Company Inventions, and any copyrights, patents, mask work rights or other intellectual
property rights relating thereto. Service Provider’s obligation to execute or cause to be executed, when it
is in Service Provider’s power to do so, any such instrument or papers shall continue during and at all
times after the end of the Relationship and until the expiration of the last such intellectual property right
to expire in any country of the world. Service Provider hereby irrevocably designates and appoints the
Company and its duly authorized officers and agents as Service Provider’s agent and attorney-in-fact, to
act for and in Service Provider’s behalf and stead to execute and file any such instruments and papers and
to do all other lawfully permitted acts to further the application for, prosecution, issuance, maintenance or
transfer of letters patent, copyright, mask work and other registrations related to such Company
Inventions. This power of attorney is coupled with an interest and shall not be affected by Service
Provider’s subsequent incapacity.
(g) Exception to Assignments . Subject to the requirements of applicable state law, if any,
Service Provider understands that the Company Inventions will not include, and the provisions of this
Agreement requiring assignment of inventions to the Company do not apply to, any invention which
qualifies fully for exclusion under the provisions of applicable state law, if any, attached hereto as Exhibit
B. In order to assist in the determination of which inventions qualify for such exclusion, Service Provider
will advise the Company promptly in writing, during and for a period of twelve (12) months immediately
following the termination of the Relationship, of all Inventions solely or jointly conceived or developed
or reduced to practice by Service Provider or Service Provider’s personnel in connection with, or as a
result of, the Services performed for the Company during the period of the Relationship.
6. Company Property; Returning Company Documents . Service Provider acknowledges that Service
Provider has no expectation of privacy with respect to the Company’s telecommunications, networking or
information processing systems (including, without limitation, files, e-mail messages, and voice messages) and
that Service Provider’s activity and any files or messages on or using any of those systems may be monitored or
reviewed at any time without notice. Service Provider further acknowledges that any property situated on the
Company’s premises or systems and owned by the Company, including disks and other storage media, filing
cabinets or other work areas, is subject to inspection by Company personnel at any time with or without notice.
At the time of termination of the Relationship, Service Provider will deliver to the Company (and will not keep
in Service Provider’s possession, recreate or deliver to anyone else) any and all devices, records, data, notes,
reports, proposals, lists, correspondence, specifications, drawings, blueprints, sketches, laboratory notebooks,
materials, flow charts, equipment, other documents or property, or reproductions of any of the aforementioned
items developed by Service Provider or Service Provider’s personnel pursuant to the Relationship or otherwise
belonging to the Company, its successors or assigns.
7. Termination Certification . In the event of the termination of the Relationship, Service Provider shall
sign and deliver the “Termination Certification” attached hereto as Exhibit C; however, Service Provider’s
failure to sign and deliver the Termination Certification shall in no way diminish Service Provider’s continuing
obligations under this Agreement.
8. Notice to Third Parties. During the periods of time during which Service Provider is restricted in
taking certain actions by the terms of Section 9 of this Agreement (the “Restriction Period”), Service Provider
shall inform any entity or person with whom Service Provider may seek to enter into a business relationship
(whether as an owner, employee, independent contractor or otherwise) of Service Provider’s contractual
obligations under this Agreement. Service Provider acknowledges that the Company may, with or without prior
notice to Service Provider and whether during or after the term of the Relationship, notify third parties of
Service Provider’s agreements and obligations under this Agreement. Upon written request by the Company,
Service Provider will respond to the Company in writing regarding the status of Service Provider’s engagement
or proposed engagement with any party during the Restriction Period.
9. Solicitation of Employees, Consultants and Other Parties. As described above, Service Provider
acknowledges that the Company’s Confidential Information includes information relating to the Company’s
employees, consultants, customers and others, and Service Provider will not use or disclose such Confidential
Information except as authorized by the Company in advance in writing. Service Provider further agrees as
follows:
(a) Employees, Consultants . During the term of the Relationship, and for a period of twelve (12)
months immediately following the termination of the Relationship for any reason, whether with or
without cause, Service Provider shall not, directly or indirectly, solicit any of the Company’s employees
or consultants to terminate such employees’ or consultants’ relationship with the Company, or attempt to
solicit employees or consultants of the Company, either for Service Provider or for any other person or
entity.
(b) Other Parties. During the term of the Relationship, Service Provider will not influence any of
the Company’s clients, licensors, licensees or customers from purchasing Company products or services
or solicit or influence or attempt to influence any client, licensor, licensee, customer or other person either
directly or indirectly, to direct any purchase of products and/or services to any person, firm, corporation,
institution or other entity in competition with the business of the Company.
10. No Change to Duration of Relationship. Service Provider understands and acknowledges that this
Agreement does not alter, amend or expand upon any rights Service Provider may have to continue in the
relationship with the Company under any existing agreements between the Company and Service Provider,
including without limitation the Member Agreement, or under applicable law.
(a) Facilitation of Agreement. Service Provider shall execute promptly, both during and after the
end of the Relationship, any proper oath, and to verify any proper document, required to carry out the
terms of this Agreement, upon the Company’s written request to do so.
(b) No Conflicts . Service Provider represents and warrants that Service Provider’s performance
of all the terms of this Agreement does not and will not breach any agreement Service Provider has
entered into, or will enter into, with any third party, including without limitation any agreement to keep in
confidence proprietary information or materials acquired by Service Provider in confidence or in trust
prior to or during the Relationship. Service Provider will not disclose to the Company or use any
inventions, confidential or non-public proprietary information or material belonging to any previous
client, employer or any other party. Service Provider will not induce the Company to use any inventions,
confidential or non-public proprietary information, or material belonging to any previous client, employer
or any other party. Service Provider shall not enter into any written or oral agreement that conflicts with
the provisions of this Agreement.
Service Provider represents and warrants that Service Provider has listed on Exhibit A all
agreements (e.g., non-competition agreements, non-solicitation of customers agreements, non-solicitation
of employees agreements, confidentiality agreements, inventions agreements, etc.), if any, with a current
or former client, employer, or any other person or entity, that may restrict Service Provider’s ability to
perform the Services or Service Provider’s ability to recruit or engage customers or service providers on
behalf of the Company, or otherwise relate to or restrict Service Provider’s ability to perform all
applicable duties for the Company or any obligation Service Provider may have to the Company. Service
Provider shall not enter into any written or oral agreement that conflicts with the provisions of this
Agreement.
Service Provider further represents that Service Provider does not presently perform or intend to
perform, so long as Service Provider is a party to the Member Agreement, consulting or other services
for, and Service Provider is not presently employed by and has no intention of being employed by,
companies whose businesses or proposed businesses in any way involve products or services that would
be competitive with the Company’s products or services, or those products or services proposed or in
development by the Company so long as Service Provider is a party to the Member Agreement. If,
however, Service Provider decides to do so, Service Provider agrees that, in advance of accepting such
employment or agreeing to perform such services, Service Provider will promptly notify the Company in
writing, specifying the organization to which Service Provider proposes to render services, and provide
information sufficient to allow the Company to determine if such work would conflict with the interests
of the Company.
(c) Voluntary Execution . Service Provider certifies and acknowledges that Service Provider has
carefully read all of the provisions of this Agreement, that Service Providerunderstands and has
voluntarily accepted such provisions, and that Service Provider will fully and faithfully comply with such
provisions.
12. Electronic Delivery . Nothing herein is intended to imply a right to participate in any of the
Company’s equity incentive plans, however, if Service Provider does participate in such plan(s), the Company
may, in its sole discretion, decide to deliver any documents related to Service Provider’s participation in the
Company’s equity incentive plan(s) by electronic means or to request Service Provider’s consent to participate
in such plan(s) by electronic means. Service Provider hereby consents to receive such documents by electronic
delivery and agrees, if applicable, to participate in such plan(s) through an on-line or electronic system
established and maintained by the Company or a third party designated by the Company.
13. Miscellaneous .
(a) Governing Law. The validity, interpretation, construction and performance of this
Agreement, and all acts and transactions pursuant hereto and the rights and obligations of the parties
hereto shall be governed, construed and interpreted in accordance with the laws of the state of Delaware,
without giving effect to principles of conflicts of law.
(b) Entire Agreement. Except as described in Section 3, this Agreement sets forth the entire
agreement and understanding between the Company and Service Provider relating to its subject matter
and merges all prior discussions between the parties to this Agreement. No amendment to this Agreement
will be effective unless in writing signed by both parties to this Agreement. The Company shall not be
deemed hereby to have waived any rights or remedies it may have in law or equity, nor to have given any
authorizations or waived any of its rights under this Agreement, unless, and only to the extent, it does so
by a specific writing signed by a duly authorized officer of the Company. Any subsequent change or
changes in Service Provider’s duties, obligations, rights or compensation will not affect the validity or
scope of this Agreement.
(c) Successors and Assigns. This Agreement will be binding upon Service Provider’s successors
and assigns, and will be for the benefit of the Company, its successors, and its assigns.
(d) Notices . Any notice, demand or request required or permitted to be given under this
Agreement shall be in writing and shall be deemed sufficient when delivered personally or by overnight
courier or sent by email, or 48 hours after being deposited in the U.S. mail as certified or registered mail
with postage prepaid, addressed to the party to be notified at such party’s address as set forth on the
signature page, as subsequently modified by written notice, or if no address is specified on the signature
page, at the most recent address set forth in the Company’s books and records.
(e) Severability . If one or more of the provisions in this Agreement are deemed void or
unenforceable to any extent in any context, such provisions shall nevertheless be enforced to the fullest
extent allowed by law in that and other contexts, and the validity and force of the remainder of this
Agreement shall not be affected. The Company and Service Provider have attempted to limit Service
Provider’s right to use, maintain and disclose the Company’s Confidential Information, and to limit
Service Provider’s right to solicit employees and customers only to the extent necessary to protect the
Company from unfair competition. Should a court of competent jurisdiction determine that the scope of
the covenants contained in Section 9 exceeds the maximum restrictiveness such court deems reasonable
and enforceable, the parties intend that the court should reform, modify and enforce the provision to such
narrower scope as it determines to be reasonable and enforceable under the circumstances existing at that
time. In the event that any court or government agency of competent jurisdiction determines that,
notwithstanding the terms of the Member Agreement specifying Service Provider’s Relationship with the
Company, Service Provider’s provision of services to the Company is as an employee under the
applicable laws, then solely to the extent that such determination is applicable, references in this
Agreement to the Relationship between Service Provider and the Company shall be interpreted to include
an employment relationship, and this Agreement shall not be invalid and unenforceable but shall be read
to the fullest extent as may be valid and enforceable under the applicable laws to carry out the intent and
purpose of this Agreement.
(f) Remedies . Service Provider acknowledges that violation of this Agreement by Service
Provider may cause the Company irreparable harm, and therefore Service Provider agrees that the
Company will be entitled to seek extraordinary relief in court, including, but not limited to, temporary
restraining orders, preliminary injunctions and permanent injunctions without the necessity of posting a
bond or other security (or, where such a bond or security is required, that a $1,000 bond will be
adequate), in addition to and without prejudice to any other rights or remedies that the Company may
have for a breach of this Agreement.
(h) Counterparts . This Agreement may be executed in any number of counterparts, each of
which when so executed and delivered shall be deemed an original, and all of which together shall
constitute one and the same agreement. Execution of a facsimile or scanned copy will have the same force
and effect as execution of an original, and a facsimile or scanned signature will be deemed an original and
valid signature.
SERVICE PROVIDER:
Executed on
Garett Johnson
The following is a list of all Inventions that, as of the Effective Date: (A) have been created by Service Provider or on
Service Provider’s behalf, and/or (B) are owned exclusively by Service Provider or jointly by Service Provider with
others or in which Service Provider has an interest, and that relate in any way to any of the Company’s actual or
proposed businesses, products, services, or research and development, and which are not assigned to the Company
hereunder:
Except as indicated above on this Exhibit, Service Provider has no inventions, improvements or original works to
disclose pursuant to Section 5(a) of this Agreement.
Executed on
(a) Any provision in an employment agreement which provides that an employee shall assign, or
offer to assign, any of the employee’s rights in an invention to the employee’s employer shall not apply to an
invention that the employee developed entirely on the employee’s own time without using the employer’s
equipment, supplies, facilities, or trade secret information except for those inventions that either:
(1) Relate at the time of conception or reduction to practice of the invention to the employer’s
business, or actual or demonstrably anticipated research or development of the employer; or
(2) Result from any work performed by the employee for the employer.
(b) To the extent a provision in an employment agreement purports to require an employee to assign
an invention otherwise excluded from being required to be assigned under subdivision (a), the provision is
against the public policy of this state and is unenforceable.
(1) A provision in an employment agreement which provides that an employee shall assign or offer to
assign any of the employee’s rights in an invention to the employer does not apply to an invention for which no
equipment, supplies, facilities, or trade secret information of the employer was used and which was developed
entirely on the employee’s own time, unless (a) the invention relates (i) directly to the business of the
employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the
invention results from any work performed by the employee for the employer. Any provision which purports to
apply to such an invention is to that extent against the public policy of this state and is to that extent void and
unenforceable.
(2) An employer shall not require a provision made void and unenforceable by subsection (1) of this
section as a condition of employment or continuing employment.
(3) If an employment agreement entered into after September 1, 1979, contains a provision requiring
the employee to assign any of the employee’s rights in any invention to the employer, the employer must also,
at the time the agreement is made, provide a written notification to the employee that the agreement does not
apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer
was used and which was developed entirely on the employee’s own time, unless (a) the invention relates (i)
directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or
development, or (b) the invention results from any work performed by the employee for the employer.
(1) A provision in an employment agreement which provides that an employee shall assign or offer to
assign any of the employee's rights in an invention to the employer does not apply to an invention for which no
equipment, supplies, facilities, or trade secret information of the employer was used and which was developed
entirely on the employee's own time, unless (a) the invention relates (i) to the business of the employer, or (ii)
to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from
any work performed by the employee for the employer. Any provision which purports to apply to such an
invention is to that extent against the public policy of this State and is to that extent void and unenforceable.
The employee shall bear the burden of proof in establishing that the employee’s invention qualifies under this
subsection.
(2) An employer shall not require a provision made void and unenforceable by subsection (1) of this
Section as a condition of employment or continuing employment. This Act shall not preempt existing common
law applicable to any shop rights of employers with respect to employees who have not signed an employment
agreement.
(3) If an employment agreement entered into after January 1, 1984, contains a provision requiring the
employee to assign any of the employee's rights in any invention to the employer, the employer must also, at
the time the agreement is made, provide a written notification to the employee that the agreement does not
apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer
was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) to
the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or
development, or (b) the invention results from any work performed by the employee for the employer.
(a) Any provision in an employment agreement which provides that an employee shall assign or offer
to assign any of the employee's rights in an invention to the employer shall not apply to an invention for which
no equipment, supplies, facilities or trade secret information of the employer was used and which was
developed entirely on the employee's own time, unless:
(1) The invention relates to the business of the employer or to the employer's actual or
demonstrably anticipated research or development; or
(2) the invention results from any work performed by the employee for the employer.
(b) Any provision in an employment agreement which purports to apply to an invention which it is
prohibited from applying to under subsection (a), is to that extent against the public policy of this state and is to
that extent void and unenforceable. No employer shall require a provision made void and unenforceable by this
section as a condition of employment or continuing employment.
(c) If an employment agreement contains a provision requiring the employee to assign any of the
employee's rights in any invention to the employer, the employer shall provide, at the time the agreement is
made, a written notification to the employee that the agreement does not apply to an invention for which no
equipment, supplies, facility or trade secret information of the employer was used and which was developed
entirely on the employee's own time, unless:
(1) The invention relates directly to the business of the employer or to the employer's actual or
demonstrably anticipated research or development; or
(2) The invention results from any work performed by the employee for the employer.
(d) Even though the employee meets the burden of proving the conditions specified in this section,
the employee shall disclose, at the time of employment or thereafter, all inventions being developed by the
employee, for the purpose of determining employer and employee rights in an invention.
Subdivision 1. Inventions not related to employment. Any provision in an employment agreement which provides
that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer shall not
apply to an invention for which no equipment, supplies, facility or trade secret information of the employer was used
and which was developed entirely on the employee's own time, and (1) which does not relate (a) directly to the
business of the employer or (b) to the employer's actual or demonstrably anticipated research or development, or (2)
which does not result from any work performed by the employee for the employer. Any provision which purports to
apply to such an invention is to that extent against the public policy of this state and is to that extent void and
unenforceable.
Subd. 2. Effect of subdivision 1. No employer shall require a provision made void and unenforceable by subdivision
1 as a condition of employment or continuing employment.
Subd. 3. Notice to employee. If an employment agreement entered into after August 1, 1977 contains a provision
requiring the employee to assign or offer to assign any of the employee's rights in any invention to an employer, the
employer must also, at the time the agreement is made, provide a written notification to the employee that the
agreement does not apply to an invention for which no equipment, supplies, facility or trade secret information of the
employer was used and which was developed entirely on the employee's own time, and (1) which does not relate (a)
directly to the business of the employer or (b) to the employer's actual or demonstrably anticipated research or
development, or (2) which does not result from any work performed by the employee for the employer.
EXHIBIT C
TERMINATION CERTIFICATION
This is to certify that Service Provider does not have in Service Provider’s possession, nor has Service Provider
failed to return, any devices, records, data, notes, reports, proposals, lists, correspondence, specifications, drawings,
blueprints, sketches, laboratory notebooks, flow charts, materials, equipment, other documents or property, or copies
or reproductions of any aforementioned items belonging to CHAINSTACK, LLC, a Delaware company, its
subsidiaries, affiliates, successors or assigns (collectively, the “Company” ).
Service Provider further certifies that Service Provider has complied with all the terms of the Company’s
Confidential Information and Invention Assignment Agreement (the “Confidentiality Agreement”) signed by Service
Provider, including the reporting of any Inventions (as defined therein), conceived or made by Service Provider or
Service Provider’s personnel (solely or jointly with others) covered by the Confidentiality Agreement, and Service
Provider acknowledges Service Provider’s continuing obligations under the Confidentiality Agreement.
Service Provider further agrees that, in compliance with the Confidentiality Agreement, Service Provider will
preserve as confidential all trade secrets, confidential knowledge, data or other proprietary information relating to
products, processes, know- how, designs, formulas, developmental or experimental work, computer programs, data
bases, other original works of authorship, customer lists, business plans, financial information or other subject matter
pertaining to any business of the Company or any of its employees, clients, consultants or licensees.
Service Provider further agrees that for twelve (12) months immediately following the termination of Service
Provider’s Relationship with the Company, Service Provider shall not either directly or indirectly solicit any of the
Company’s employees or consultants to terminate such employees’ or consultants’ relationship with the Company, or
attempt to solicit employees or consultants of the Company, either for Service Provider or for any other person or
entity.
Further, Service Provider agrees that Service Provider shall not use any Confidential Information of the
Company to influence any of the Company’s clients or customers from purchasing Company products or services or
to solicit or influence or attempt to influence any client, customer or other person either directly or indirectly, to
direct any purchase of products and/or services to any person, firm, corporation, institution or other entity in
competition with the business of the Company.
Date: