Intellectual Property Lawyers for Eugene, Oregon

You might think that because you wrote the code, you have the right to share it, but that’s not how developer agreements usually work. In Washington State, these contracts are enforceable, and they can absolutely stop you from sharing or reusing code you created during a project. It really comes down to ownership, and under most contracts, that ownership belongs to the company, not you. Let’s Talk About Who Owns the Code When you sign a developer agreement, you’re usually agreeing to one of two things: either it’s a “work-for-hire” deal or you're assigning your intellectual property rights. Either way, the result is the same. The company owns whatever you build for them. Since they own it, they get to decide what happens to it. Even if you’re the one who wrote every line, that doesn’t mean you have the right to reuse or share it if you’ve already signed those rights away. This kind of setup is standard in the tech world. Companies need to protect their IP, especially when it includes competitive advantages or trade secrets. That’s why they ask developers to assign rights and agree to keep things confidential. What About Washington State Law? Washington does offer some protection to developers, but it’s limited. There’s a statute, RCW 49.44.140, that says employers can’t claim ownership of inventions you created entirely on your own time, using your own resources, and completely unrelated to their business. That sounds helpful, but here’s the catch. It only applies if you’re an employee, not an independent contractor. And even then, the second your work overlaps with their business or involves any company resources, the protection probably doesn’t apply. So if the code you’re writing is part of a contract, or even just loosely connected to the company’s business, then the company likely owns it. Why This Matters If you violate the agreement, you’re not just risking a slap on the wrist. The company could send a takedown notice to GitHub, file for an injunction, or even sue for breach of contract or copyright infringement. If the code includes anything proprietary, like business logic or algorithms, they might also go after you for trade secret misappropriation. And beyond the legal problems, there’s your reputation to think about. Word travels fast in development circles, especially in local communities. Getting labeled as someone who mishandles IP can make future contracts harder to land. How to Protect Yourself The good news is that you still have leverage before you sign. A lot of companies start with broad IP assignment language, but they’re often open to carving out exceptions. You can ask to include a “prior inventions” schedule that lists tools, frameworks, or libraries you already created. That way, you can keep using your own work in other projects. If open-source contribution is important to you, say so upfront. Some companies will allow developers to contribute non-proprietary or generic components to open-source projects, especially if those contributions don’t compete with their business. Just make sure it’s all clearly spelled out in writing and approved in advance. You might also negotiate a time limit on confidentiality terms. The company will likely want to own the core project code permanently. That doesn’t mean you can’t eventually talk about general techniques or patterns you used, especially after some time has passed. Smart Moves Before You Sign Before you agree to anything, take a moment to list any existing code or tools you plan to use. Try to get those explicitly excluded from the IP assignment, or at least confirm that you’ll retain the right to use them elsewhere. And again, if open-source is part of your career plan, be upfront. Get language in the contract that allows you to publish select components with written approval. If you develop a useful utility during the project and think it might have broader uses, talk to the company before the contract ends. See if they’d be open to letting you open-source it or license it back to yourself for use in future projects. When It’s Time to Bring in a Lawyer If all this feels high-stakes, and it often is, consider having a tech-savvy attorney take a look. A good lawyer can help spot overly aggressive clauses, suggest better language, and help you protect both your rights and your long-term goals. This is especially important if you’re actively contributing to open-source or if you’ve built up your own libraries over time. A little legal help now can save you a lot of trouble later.

Here’s how I’d approach structuring an Employee IP Agreement if your goal is to protect your company’s intellectual property without running into enforceability issues under U.S. law. Covering Core IP OwnershipCovering Core IP Ownership First, start with a “work made for hire” clause. It’s a good foundation, but it’s not enough on its own. Under U.S. copyright law (17 U.S.C. § 101), only certain types of work qualify as “made for hire,” and many employee-created assets may fall outside that definition. So you’ll want to pair it with a present-tense assignment clause. Be specific here. Use language like “the employee hereby assigns” rather than “will assign.” That slight shift matters. It ensures the company owns the rights immediately when the work is created. Also, define “intellectual property” broadly. Don’t just list patents or source code. Include software, algorithms, documentation, trade secrets, databases, and anything tied to your business. The scope should clearly include anything created during work hours, using company tools or systems, or connected to your current or future business operations. Disclosure and Documentation You’ll want to require employees to promptly disclose any inventions or creative works they produce. Put it in writing. This gives your company the chance to evaluate whether the work is covered under the agreement. It’s also a good idea to require them to maintain proper documentation. Accurate records can make a real difference in patent filings or if a dispute ever comes up. Pre-Existing IP and Legal Carve-Outs There should be a section where employees list anything they’ve developed or own before joining the company. If they don’t list anything, the agreement should include language confirming they’re representing that no such prior inventions exist. This prevents claims down the road that something developed during employment was actually theirs from before. Now, depending on your state, you may need to include statutory carve-outs. California, Illinois, and Washington all have laws that limit how far IP assignment clauses can go. For example, in California, you’re required to carve out inventions developed entirely on the employee’s own time, without company resources, and unrelated to your business (see California Labor Code § 2870). Without that carve-out, your entire assignment provision could be thrown out. Confidentiality Obligations Make sure there’s a strong confidentiality section. This should cover source code, technical documentation, designs, product plans, customer lists, financial data, and anything else proprietary. Make it clear that the obligation continues even after the employee leaves. You’ll also want to require that all company property and digital assets are returned at the end of employment, including devices, credentials, and files. Ongoing Cooperation and Enforcement Mechanisms Include a clause requiring employees to cooperate in IP protection efforts even after they leave. That could mean signing patent paperwork or providing testimony if needed. To make that enforceable, add a power of attorney clause. This gives the company the authority to act on the employee’s behalf if they’re unwilling or unreachable. It’s a simple way to prevent delays when you’re trying to secure or enforce rights. It’s also smart to include a waiver of moral rights where allowed. This is especially useful for creative works and software. It gives the company full freedom to modify or use the work without needing future approval. Legal Remedies and General Terms Be clear that the company can pursue equitable relief, like an injunction, if there’s a violation. Sometimes monetary damages aren’t enough to prevent harm. Include a severability clause so that if one part of the agreement is invalidated, the rest still stand. Don’t forget to specify the governing law and venue for any disputes. As for restrictive covenants, keep in mind that non-compete clauses are unenforceable in California and heavily restricted elsewhere. Non-solicitation clauses may still be allowed, but they need to be narrowly written. You should have your legal team confirm their enforceability based on your state. Finally, think about consideration. For new hires, the job offer itself usually counts. But for existing employees, you’ll likely need to offer something extra, like a bonus or promotion, to make the agreement stick.

Running a trademark search before registering your business name isn’t legally required, but it’s one of the most important steps you can take to avoid future problems. Registering your name with the state forms your business entity, but it doesn’t give you trademark rights. Trademark rights come from use in commerce and, if you file with the USPTO, registration at the federal level. Why a Trademark Search Matters The central legal test in trademark law is whether a name is likely to cause consumer confusion. That means you don’t need to copy someone else’s name exactly to get into trouble. Even something that looks or sounds similar in the same or related industry could be enough. If you skip the search and move forward, you risk: • Infringement claims: Another company could demand you stop using the name and, if necessary, sue for damages. • Forced rebranding: If you’ve already invested in your logo, website, signage, or marketing materials, being forced to change your name can be expensive and disruptive. • USPTO rejection: If you apply for a federal trademark, the USPTO will run its own search. If they find a confusingly similar mark, your application will be denied and you’ll lose the filing fees. A well-documented example is when small businesses open under a catchy name, only to receive a cease-and-desist letter from a national chain using a similar name in the same space. Even if you’re in a different state, a federal registration gives that company priority rights nationwide. A proper trademark clearance search should cover more than just identical names. You’ll want to check: • Federal database (USPTO TESS): This is the official record of all registered and pending federal trademarks. • State trademark databases: Many businesses register marks only at the state level. • Common law sources: Unregistered marks can still have legal protection. Check Google, industry directories, social media, and domain names. • Similar variations: Look for phonetic equivalents and alternative spellings, such as “Kwik” for “Quick,” or slight wording changes that could still cause confusion. Professional Assistance You can run an initial search yourself at no cost, but these searches have limits. For example, the USPTO database won’t flag marks that are spelled differently but sound alike, or names with similar meanings. Attorneys and specialized search firms use tools that uncover those kinds of risks. While hiring a professional costs more upfront, it’s often far cheaper than litigation or a rebrand. Limitations A search doesn’t guarantee that your name will never be challenged. Trademark law involves judgment calls about how similar marks are and whether they overlap in goods or services. Still, a thorough search puts you in a much stronger position to defend your choice and move toward federal registration if you want nationwide rights.

Hello, I'd be glad to review the details of the trademark assignment and confirm it properly transfers ownership of your trademark. As a trademark attorney, I have helped clients in similar situations both draft trademark assignments and record them with the USPTO to ensure that the trademark reflects the right ownership information. I would be happy to have a brief free 15 minute consult call to learn more details and see how I can help. Thanks for your consideration. Best, Roman rvayner@vaynerlegal.com 414 628 9099 www.vaynerlegal.com

You’re not the first to confuse a KISS Note with intellectual property protection, and you definitely won’t be the last. It’s a common mix-up in the startup world. But here’s the truth: A KISS Note has nothing to do with protecting your software. It’s a financing instrument created by 500 Startups, designed as an alternative to convertible notes and SAFEs for early-stage fundraising. It’s a way for investors to give you money now in exchange for equity later. It does not offer any legal protection for your code or ideas. So What Do You Actually Need to Protect Your IP? If you're building software in California, there are several key legal tools you’ll want to have in place. Start with the ones that offer immediate protection and work your way toward longer-term strategies. Always Start with NDAs If you're showing your software to anyone (whether it's a co-founder, a contractor, an investor, or a beta tester) you need a solid non-disclosure agreement in place before you share anything. It’s your first line of defense, especially if you want to preserve trade secret protection. Your NDA should spell out exactly what you consider confidential. This might include your source code, algorithms, user data, business plans, or any other proprietary information. The agreement should also state how long confidentiality lasts and what the other party can and cannot do with your information. One important note here: California law prohibits non-compete clauses under Business and Professions Code Section 16600. Do not include one in your NDA. It won't be enforceable. Instead, focus strictly on confidentiality and use limitations. Copyright is Automatic, but Registration Matters As soon as you write your code, it’s protected under federal copyright law. That protection applies to the actual expression (the specific code) not to your underlying ideas, functionality, or algorithms. Even though protection is automatic, registering with the U.S. Copyright Office gives you significant legal benefits. You can’t file a federal lawsuit without registration. And if your copyright is registered before infringement occurs, you may be eligible for statutory damages of up to $150,000 per work and recovery of attorney’s fees. The process usually costs between $65 and $85 and takes a few months. Trade Secrets Require Real Effort to Stay Protected If your software includes proprietary algorithms, confidential processes, or unique technical methods that provide a competitive edge, you may be eligible for trade secret protection under the California Uniform Trade Secrets Act. But here’s the catch. That protection only lasts as long as you actively protect the information. This includes limiting access to your source code, using secure development environments, marking documents as confidential, and having everyone involved sign NDAs. You need to treat your trade secrets like actual secrets if you want the law to do the same. Considering Patents? Proceed Carefully Software patents are complex, especially following the Supreme Court’s 2014 Alice decision. You can’t patent abstract ideas, mathematical formulas, or generic computer processes. Your software needs to solve a specific technical problem in a novel, non-obvious way or improve the functionality of a computer system itself. If you've developed something truly unique — like a new data compression algorithm, a better machine learning architecture, or a new way to optimize networking — a patent might be worth exploring. Just keep in mind that the process is expensive, often costing $10,000 to $15,000 with legal fees. It can also take several years. Many software companies choose to rely on trade secrets and copyrights instead. How to Put All of This Into Practice Begin with what you can implement right away. Create a strong NDA template and use it consistently. Register your copyright as soon as your codebase is developed enough to be meaningful. Protect your trade secrets by putting real technical and legal safeguards in place. Track your development process carefully. Version control, timestamps, and contributor logs can all serve as useful evidence in a legal dispute. If you’re working with employees or contractors in California, be especially cautious. The state has employee-friendly laws, so your contracts must clearly state that all work product belongs to your company and that all confidential information stays confidential. When Should You Talk to a Lawyer? Once you’re dealing with patents, investor negotiations, infringement threats, or user data privacy, it’s time to bring in professional legal help. These are complex areas, and the risks are too high to wing it.